Scott McKeever

Trademark Trial and Appeal Board

Sep 10, 2008

No. 78919885 (T.T.A.B. Sep. 10, 2008)

Mailed: September 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Scott McKeever
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Serial No. 78919885
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Susan M. Natland of Knobbe, Martens, Olson & Bear, LLP for
Scott McKeever.

Mark F. Pilaro, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).1
_______

Before Grendel, Kuhlke and Walsh, Administrative Trademark
Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Scott McKeever, applicant, has filed an application to
register the mark MY HORSE PLAYER (in standard character
form) on the Principal Register for “computer software,
namely, software for use in connection with handicapping of
races and horse races” in International Class 9, “providing
information via a global computer network relating to
handicapping of races and horse races” in International

1 The application was reassigned to the above-noted examining
attorney for the preparation and the filing of the brief.
THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B
Serial No. 78919885
2
Class 41, and “application service provider services,
namely, providing computer software applications for use in
handicapping of races and horse races” in International
Class 42.2
The examining attorney has refused registration under
Section 2(e)(1) of the Trademark Act, 15 U.S.C.
§1052(e)(1), on the ground that applicant’s mark is merely
descriptive of his goods and services. After the examining
attorney made the mere descriptiveness refusal final,
applicant requested reconsideration and filed this appeal.
On January 3, 2008, the examining attorney denied the
request for reconsideration and the appeal was resumed.
Both applicant and the examining attorney have filed
briefs. We reverse the refusal to register.
As a preliminary matter, we address the examining
attorney’s contention that the Board should give weight to
applicant’s offer to disclaim HORSE PLAYER during the
prosecution of this application and consider it a
concession that HORSE PLAYER is merely descriptive. In
response to the first Office Action the applicant included
the following statement:

2 Application Serial No. 78919885, filed on June 29, 2006, under
Section 1(b) of the Trademark Act, 15 U.S.C. §1051(b), alleging a
bona fide intention to use the mark in commerce.
Serial No. 78919885
3
With respect to the Section 2(e)(1) refusal,
Applicant is willing to disclaim HORSE PLAYER
apart from the mark as shown, but for the
following reasons Applicant respectfully
disagrees that the mark as a whole is merely
descriptive.

June 1, 2007 Response p. 1.

Applicant further invited the examining attorney to
contact applicant to enter an Examiner’s Amendment with the
disclaimer if the examining attorney agreed to withdraw the
refusal. Id. n. 1. Applicant in his request for
reconsideration and his brief contends that this statement
was not a concession as to the mere descriptiveness of
HORSE PLAYER and should not be construed as such.
The examining attorney argues that applicant’s offer
to disclaim matter is analogous to an applicant’s amendment
to seek registration based on acquired distinctiveness
under Section 2(f), which would be a concession that the
matter is merely descriptive.
While a claim of acquired distinctiveness under
Section 2(f) may be construed as a concession, if an
applicant instead argues that its mark is inherently
distinctive but claims, in the alternative, that the matter
sought to be registered has acquired distinctiveness under
Section 2(f), this does not constitute a concession that
the matter is merely descriptive. Compare In re Cabot
Serial No. 78919885
4
Corp., 15 USPQ2d 1224, 1229 (TTAB 1990) with In re E S
Robbins Corp., 30 USPQ2d 1540, 1542 (TTAB 1992). See also
TMEP Sections 1212.02(b) and 1212.02(c) (5th ed. 2007).
Thus, to the extent that there is an analogy, the
disclaimer was clearly made in the alternative and cannot
serve as a concession.
We now turn to consider the refusal under Section
2(e)(1). “A mark is merely descriptive if it ‘consist[s]
merely of words descriptive of the qualities, ingredients
or characteristics of’ the goods or services related to the
mark.” In re Oppedahl & Larson LLP, 373 F.3d 1171, 71
USPQ2d 1370, 1371 (Fed. Cir. 2004), quoting, Estate of P.D.
Beckwith, Inc. v. Commissioner, 252 U.S. 538, 543 (1920).
See also In re MBNA America Bank N.A., 340 F.3d 1328, 67
USPQ2d 1778, 1780 (Fed. Cir. 2003). “Whether a given mark
is suggestive or merely descriptive depends on whether the
mark ‘immediately conveys ... knowledge of the ingredients,
qualities, or characteristics of the goods ... with which
it is used,’ or whether ‘imagination, thought, or
perception is required to reach a conclusion on the nature
of the goods.’” In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009, 1010 (Fed. Cir. 1987) citing In re Qwik-Print Copy
Shops, Inc., 616 F.2d 523, 205 USPQ 505, 507 (CCPA 1980).
Serial No. 78919885
5
See also In re Abcor Development Corp., 588 F.2d 811, 200
USPQ 215, 218 (CCPA 1978).
The mere combination of descriptive words does not
necessarily create a nondescriptive word or phrase. In re
Associated Theatre Clubs Co., 9 USPQ2d 1660, 1662 (TTAB
1988). If each component retains its merely descriptive
significance in relation to the goods or services, the
combination results in a composite that is itself merely
descriptive. In re Oppedahl & Larson LLP, supra. However,
a mark comprising a combination of merely descriptive
components is registrable if the combination of terms
creates a unitary mark with a unique, nondescriptive
meaning, or if the composite has a bizarre or incongruous
meaning as applied to the goods. See In re Colonial Stores
Inc., 394 F.2d 549, 157 USPQ 382 (CCPA 1968); In re Shutts,
217 USPQ 363 (TTAB 1983); and TMEP Section 1209.03(d).
It is the examining attorney’s position that MY HORSE
PLAYER is comprised of merely descriptive components, which
retain their merely descriptive significance when combined.
Specifically, he argues that HORSEPLAYER is defined as “one
who regularly bets on horse races.” The American Heritage
Dictionary of the English Language (4th ed. 2000), retrieved
from Bartleby.com. Based on this definition, the examining
attorney concludes that HORSE PLAYER is merely descriptive
Serial No. 78919885
6
of the intended users of the goods and services. The
examining attorney also argues that HORSE PLAYER may refer
to a provider of the goods or services.
Further, the examining attorney argues that the
separate components HORSE and PLAYER are merely descriptive
of a feature of the goods and services. Specifically, the
word HORSE is merely descriptive of the goods and services
in that “all the goods and services are expressly used in
connection with horse races,” (Br. p. 6), and the word
PLAYER is descriptive of the goods and services inasmuch as
they are used in connection with betting on horse races,
and “in the context of horse races, ‘play’ means ‘to
participate in betting’ or ‘gamble’.” Id. citing The
American Heritage Dictionary of the English Language (4th
ed. 2006).3 Thus, according to the examining attorney,
together, the terms HORSE and PLAYER “have the meaning of
something used in playing horses, just as a record player
is a thing used to play records. As both the services and
goods here are used to play horses, the wording HORSE

3 The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983). Applicant objected to the examining attorney’s
reference to an online dictionary definition in its brief, and
the Board has obtained a definition from a resource that has a
printed counterpart. In re CyberFinancial.Net Inc., 65 USPQ2d
1789, 1791 n.3 (TTAB 2002) and In re Total Quality Group Inc., 51
USPQ2d 1474, 1476 (TTAB 1999).
Serial No. 78919885
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PLAYER is [merely] descriptive of a feature, specifically
the nature, of the goods and services.” Id.
In support of his position that MY HORSE PLAYER is not
merely descriptive, applicant submitted 37 third-party
registrations on the Principal Register that include the
term MY with disclaimed matter. See, e.g., Reg. No.
3226788 for MY WEB, WEB disclaimed, for inter alia,
software for browsing the global computer network; Reg. No.
2800457 for MY ARABIC TEACHER, ARABIC TEACHER disclaimed,
for arabic language tutoring software; and Reg. No. 2555241
for MY TRADER, TRADER disclaimed, for computer software for
analyzing and evaluating financial information for
securities transactions that may be downloaded from a
global computer network. The examining attorney responded
with 40 third-party registrations where MY is combined with
descriptive or generic terms and is on the Supplemental
Register, or disclaimed or registered under Section 2(f)
based on acquired distinctiveness on the Principal
Register. See, e.g., Reg. No. 1947753 on the Supplemental
Register for MY FIRST KEYBOARD for learning styled computer
keyboard; and Reg. No. 3109083 for MYREGISTRY.COM and
design, MYREGISTRY.COM disclaimed, for global online gift
registry.
Serial No. 78919885
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We do not find any of these third-party registrations
to be determinative in this case. It is well established
that we must determine each case on its own record and
prior decisions by examining attorneys are not binding on
the Board. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001). Moreover, given the
number of third-party registrations supporting each
position, the only conclusion we may draw is that sometimes
“MY” marks have been found to be descriptive and sometimes
they have not.
In response to applicant’s contention that the
combination of MY with HORSE PLAYER is incongruous, the
examining attorney argues:
[MY] serves only as the possessive pronoun
identifying the particular customer’s chosen
‘horse player,’ or mode of assistance in
handicapping a horse race, be it applicant’s
goods and services, another firm’s software or
‘tip sheet,’ information services provided
through online means, contact with a betting
service, or live discussion with another race
attendant. Because all of these other sources of
assistance can perfectly accurately be described
by the customer as ‘my horse player,’ inclusion
of the term MY alone does not indicate the source
of the horse player goods or services as
applicant or any other provider. ... As such,
the significance of the term MY is only as a
possessive adjective, and not as a source
identifier.
... [T]he term MY, in combination with HORSE
PLAYER indicates the perfectly congruous meanings
of “this is my horse player, or the horseplayer
with which I have some relationship, or the horse
Serial No. 78919885
9
player which I use in playing horses.”
Applicant’s second view, that the mark would be
incongruous unless viewed from a third person
perspective is also based on much too limited a
view of the descriptive significance of the term
HORSE PLAYER, as discussed above. The
perspective becomes irrelevant for such term, if
referring not to horseplayers as individual
people, but rather as a good or service used to
play horses, since the term is an object. As
such, it will always be referred to in the third
person, as an object has no perspective. Thus
viewing HORSE PLAYER as an object results in no
incongruity based on the perspective of the
consumer. Indeed, the incongruity claimed by the
applicant would likely immediately indicate to
that consumer that HORSE PLAYER is used to
describe a thing, rather than a person,
especially in relation to the goods and services
offered under the mark.

Br. pp. 9-10, 17-18.

The last sentence sums it up. The term HORSE PLAYER
means a person who places bets on horses, but is used here
in connection with a thing that can be used by a
horseplayer to assist in betting choices. There are at
least two mental steps that one seeing the mark must make
to connect it with a significant feature of the goods or
services: 1) the viewer must understand that the mark does
not refer to the user, that the goods or services are a
software program or online service; and 2) the goods or
services do not allow a user to place bets or play horses,
but assist in handicapping or deciding how to place bets on
horses. As for the examining attorney’s position that the
Serial No. 78919885
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mark describes the intended user of the handicapping goods
and services, this might be the case if the mark were just
HORSE PLAYER. See In re Planalytics, Inc., 70 USPQ2d 1453
(TTAB 2004) (GASBUYER merely descriptive of intended user
of risk management services in the field of pricing and
purchasing natural gas, evidence of record shows term gas
buyer applied to purchasers of natural gas supplies).
However, in this case, combining it with MY, turning the
user into the mechanism, creates a unitary phrase with
sufficient incongruity to require some thought in divining
the nature of the goods and services and, thus, the mark
does not immediately convey that information.
To the extent the examining attorney is arguing that
HORSE PLAYER may also mean a third party hired to place a
bet rather than the person handing over the money, there is
nothing in the record to support this meaning. Rather, the
record clearly establishes that a horseplayer is a person
who bets on horses for himself and not a person for hire to
take other people’s money to bet on horses or to advise
other people or handicap races for other people.
In making this determination, we are not finding that
the inclusion of the word MY will always make an otherwise
merely descriptive mark inherently distinctive. Whether or
not the term MY merely describes or only suggests “the
Serial No. 78919885
11
personal or customized nature of particular goods or
services, i.e., that the goods or services provided are
owned, chosen, customized, personalized or provided by
order of a particular user,” (Br. p. 10), must be
determined on the basis of the particular facts of each
case.
“It has been recognized that there is but a thin line
of distinction between a suggestive and a merely
descriptive term, and it is often difficult to determine
when a term moves from the realm of suggestiveness into the
sphere of impermissible descriptiveness.” In re Recovery,
Inc., 196 USPQ 830, 831 (TTAB 1977). Moreover, it is well
established that any doubt must be resolved in favor of the
applicant. See In re Merrill Lynch, Pierce, Fenner, and
Smith Inc., 828 F.2d 1567, 4 USPQ2d 1141 (Fed. Cir. 1987),
citing In re Aid Laboratories, Inc., 221 USPQ 1215, 1216
(TTAB 1983); In re Intelligent Medical Systems, Inc., 5
USPQ2d 1674 (TTAB 1987); and In re Gracious Lady Services,
Inc., 175 USPQ 380 (TTAB 1972). In view thereof, we find
that the mark MY HORSE PLAYER is not merely descriptive for
these goods and services.
Decision: The refusal to register under Section
2(e)(1) is reversed.