Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 IN RE BODYBUILDING HALL OF FAME
Serial No. 566,934
June 22, 1987
Robert G. West, Robert M. West and Marcus Lothrop for applicant
Christopher A. Sidoti
Trademark Examining Attorney
Law Office 5
(Paul E. Fahrenkopf, Managing Attorney)
Before Sams, Rice and Krugman
Opinion by Krugman
Gold's Gym Enterprises, Inc. has applied to register BODYBUILDING HALL OF FAME (BODYBUILDING disclaimed) as a service mark for maintaining and conducting an exhibition displaying outstanding participants and events in the field of bodybuilding. [FN1]
Registration has been finally refused under Section 2(e)(1) of the Trademark Act on the ground that the mark is merely descriptive as applied to the services. Specifically, the Examining Attorney contends that applicant maintains and conducts exhibitions and displays memorabilia honoring outstanding participants and events in the sport of bodybuilding; that 'hall of fame' is defined in Webster's Third New International Dictionary as: (1) a structure housing statues, busts or other memorials commemorating famous or illustrious persons and (2) a group of individuals in some particular category selected or adjudged as most illustrious or meriting immortal fame; that applicants' activities are aptly described by the designation sought to be registered; that there may be more than one 'hall of fame' for a particular sport or activity and that, therefore, the designation sought to be registered is unregistrable under Section 2(e)(1) of the Act. In support of his position, the Examining Attorney has timely made of record excerpts from articles taken from the NEXIS research database which show use of the term 'hall of fame' in connection with various sports and other activities. These include articles referring to the Intercollegiate Tennis Coaches Association Hall of Fame, the Rock 'n' Roll Hall of Fame, the International Circus Hall of Fame, the Basketball Hall of Fame, etc. [FN2]
Whether a term is merely descriptive must be determined by analyzing the possible significance of the term in relation to the goods or services for which registration is sought, the context in which it is used, and the likely reaction to the term by the average purchaser of the goods or recipient of the services. See: In re International Spike, Inc., 190 USPQ 505 (TTAB 1976) and cases cited therein. Generally, if a mark immediately imparts or conveys information about the features, characteristics or qualities of the goods or services, it is descriptive, while the term would be considered suggestive if, as applied to the goods or services, it requires imagination, thought or perception to reach a conclusion as to the nature thereof. See: In re Colonial Refining and Chemical Company, 196 USPQ 46 (TTAB 1977) and cases cited therein.
In the present case, applicant, according to its identification, maintains and conducts an exhibition displaying outstanding individuals and events in the sport of bodybuilding. In view of the dictionary definition of the term 'hall of fame' made of record by the Examining Attorney, supra, we think the term BODYBUILDING HALL OF FAME clearly indicates that applicant's exhibition features individuals who have acquired fame or illustriousness in the world of bodybuilding. We think the term sought to be registered when used in connection with applicant's services, readily describes a significant feature of the recited services and no degree of thought or imagination is necessary to discern the nature of them.
*2 Decision: The refusal of registration is affirmed.
J. D. Sams
J. E. Rice
G. D. Krugman
Members, Trademark Trial and Appeal Board
FN1. Application Serial No. 566,934 filed November 4, 1985.
FN2. The Examining Attorney also submitted with his answering brief a number of third-party registrations. Applicant responded by submitting other third-party registrations with its reply brief. These registrations are untimely as they were not submitted until after the appeal. See: Trademark Rule 2.142(d). Moreover, the list of third-party registrations submitted by applicant prior to the appeal is insufficient to make the registrations of record. See: In re Duofold, Inc., 184 USPQ 638 (TTAB 1974). Accordingly, none of the third-party registrations having properly been made of record, they are excluded from consideration herein. However, we note that, in any event, said registrations involving marks including the term 'HALL of FAME' have been handled inconsistently by the Office and even if said registrations had properly been made of record, they would be of little value in the determination of the issues presented herein.