WMS Gaming Inc.

Trademark Trial and Appeal Board

Feb 21, 2007

No. 78278183 (T.T.A.B. Feb. 21, 2007)

THIS OPINION IS NOT A
PRECEDENT OF THE T.T.A.B.

Mailed:
February 21, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re WMS Gaming Inc.
________

Serial No. 78278183
_______

Steven P. Macaluso of WMS Gaming Inc. for WMS Gaming Inc.

Sonya B. Stephens, Trademark Examining Attorney, Law Office
109 (Dan Vavonese, Managing Attorney).
_______

Before Hairston, Grendel and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

WMS Gaming Inc. filed an intent-to-use application to
register the mark CASCADING REELS for “currency and credit
operated slot machines and gaming devices, namely, gaming
machines for use in gaming establishments” (hereinafter
“slot machines”).1 Registration was refused on the ground

1 Application Serial No. 78278183, filed July 24, 2003. The
application was published for opposition on March 24, 2004. The
Notice of Allowance issued on July 6, 2004. On September 2,
2004, applicant filed a statement of use asserting September 16,
2003 as its date of first use anywhere and first use in commerce.
Serial No. 78278183
2
that CASCADING REELS for slot machines is merely
descriptive.2 Section 2(e)(1) of the Lanham Act, 15 U.S.C.
§1052(e)(1). When the refusal was made final, applicant
appealed. Both the applicant and the examining attorney
filed briefs.
We affirm.
The examining attorney contends that the mark is
merely descriptive because CASCADING REELS refers to a
technology featured in applicant’s slot machines in which

2 The registration was refused as being merely descriptive for
the first time after the review of the statement of use. TMEP
§1102.01 provides, so far as pertinent, as follows:

To the fullest extent possible, the examining attorney
will examine an intent-to-use application for
registrability under Trademark Act §§1051 and 1052(a),
(b), (c), (d), and (e) . . . That is, the examining
attorney must make all appropriate refusals with
respect to issues such as ownership, deceptiveness,
mere descriptiveness, geographic significance, and
surname significance. [Citations omitted]. The
examining attorney cannot issue a requirement or
refusal under these sections during examination of the
statement of use if the issue could or should have
been raised during initial examination, unless the
failure to issue the refusal or requirement would be a
clear error.

Our determination on appeal is limited to the merits of the
underlying refusal, not whether the failure to make the
descriptiveness refusal was clear error. In re Sambado & Son
Inc., 45 UPSQ2d 1312, 1314-1315 (TTAB 1997); TMEP §1109.08. The
Examination Organization makes the determination of “clear
error.” That determination is reviewable on petition to the
Commissioner. Id. Applicant could have filed a petition after
the issuance of the final refusal to determine whether the
descriptiveness refusal after review of the statement of use was
“clear error.” However, applicant failed to do so, and we will
not, on this appeal, review the examining attorney’s application
of the “clear error” standard.
Serial No. 78278183
3
symbols appearing in the game’s “reels” disappear after a
winning combination has been tallied and are replaced by
new symbols which “cascade” down from the top of the
screen. The examining attorney argues that the symbols are
displayed on “reels” which “cascade” down the screen and,
therefore, CASCADING REELS immediately describes a
characteristic, function and feature of the slot machines.
The examining attorney supported her refusal with the
following evidence:
1. A web page from applicant’s website describing
KABOOM!, a five-reel video slot machine with the CASCADING
REELS feature (specifically listed as a feature):
In place of traditional reel spins,
symbols drop down into the reels from
above. The 1st reel drops first, then
the 2nd, and so on until all 5 reels
have dropped the symbols. Once the
symbols have dropped, all winning
combinations are highlighted and paid
as normal. Then the added feature kicks
in! Each symbol that takes part in a
winning combination disappears, and the
symbols above them drop down to take
their place. New symbols drop onto the
screen to fill any gaps. If any new
winning combinations are formed because
of this shift, they are banged-up into
the pay meter and awarded the player.
This process continues as long as the
drop-down symbols create winning
combinations.

Serial No. 78278183
4
2. An excerpt from the Southern Gaming and
Destinations website (www.impactimagination.com) regarding
applicant’s ALL THAT GLITTERS 5-reel video slot machine:
This machine features WMS Gaming’s
CASCADING REELS feature where, instead
of traditional reel spins, jewel
symbols will cascade down onto the
reels from above.

3. Web pages from applicant’s website describing
various slot machines by listing “5RV cascading reels” or
“Cascading reels” as a feature of the slot machine.
4. A press release posted on applicant’s website
with the following description of the CASCADING REELS game:
[A] new experimental game from WMS, All
That Glitters(TM) features WMS’ new
Cascading Reels(TM) bonus element.
This 5-reel game allows players to win
additional pays as common reel symbols
disappear after the initial pay with a
second pay on new winning combinations.3

5. A series of articles dated November, 2004, posted
on www.strictlyslots.com, entitled Video Poker Optimum Play
by Dan Paymar that describes CASCADING REELS as follows:
[W]hen a winning combination hits, the
reel symbols disappear and new symbols
cascade down from the top of the screen
to refresh the grid of symbols.

3 The examining attorney posted this press release a second time
from the ClariNet website.
Serial No. 78278183
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6. A posting from the September 13, 2005 Steve’s
Everything Las Vegas website (www.everythinglv.com)
discussing applicant’s All That Glitters slot machine and
the CASCADING REELS feature as follows:
Hitting the spin button does not
display the usual whirling reels, but a
blank opening from which the sparkling
jewels cascade from the top of the
screen into reel positions.

7. A posting from the November 30, 2005 Best Online
Casinos website
(http://pokermachine.com/managearticle.asp?c=10&a=2242)
discussing the introduction of “cascading reels”:
A couple of years ago it [WMS]
introduced the “cascading reels”
concept of video slot play whereby
symbols fall into place from the top of
the screen instead of landing in place
as the reels stop one by one left to
right.

8. A series of dictionary definitions for the word
“Cascade.” A representative definition from the
MSN.ENCARTA dictionary is the noun a “downward flow of
something” or the intransitive verb to “move on to the next
thing: to move on to others in succession.”
9. A definition of “Reel” from the gambling glossary
from the www.winyourwager.com website: “a wheel inside a
slot machine window on which the slot machine symbols are
Serial No. 78278183
6
printed. The number of reels per slot machine may vary but
are usually three.”
Applicant argues that CASCADING REELS for slot
machines is not merely descriptive because applicant’s slot
machines do not have reels and, therefore, do not have
reels that “cascade” or fall in any way. Applicant
submitted screen shots from its slot machines to illustrate
how they work.
To explain, many of Applicant’s goods
are video slot machines that imitate
spinning mechanical slot machine reels
by means of computer graphics.
However, unlike many of Applicant’s
other video slot machines, the goods
bearing Applicant’s Mark are unique
because their graphics do not imitate
spinning reels. . . In this way,
instead of imitating reels (i.e.
spinning cylinders), Applicant’s at-
issue machines utilize columns of
symbols where empty voids are left when
symbols disappear, causing the symbols
residing immediately above the
dissolved symbols to fall into the
empty voids in the columns.
Importantly, all symbols residing in
column spaces below dissolved symbols
do not drop, fall, cascade or move in
any way, they remain stationary.

(Applicant’s Brief, p. 7). In other words, only the
symbols “cascade,” not the reels. “Therefore, had
Applicant branded its machines as ‘Cascading Symbols,’
‘Falling Symbols,’ or ‘Disappearing Symbols,’ such names
might, arguably, have had some descriptive significance.”
Serial No. 78278183
7
(Applicant’s Brief, p. 10). Applicant concludes that its
use of the term “Reel” suggests a general style of slot
machine (i.e., a five-reel video machine) or the visual
style of play.4
A term is merely descriptive if it immediately conveys
knowledge of a significant quality, characteristic,
function, feature or purpose of the goods or services with
which it is used, or intended to be used. In re Gyulay,
820 F.2d 1216, 3 USPQ 1009 (Fed. Cir. 1987). Whether a
particular term is merely descriptive is determined in
relation to the goods or services for which registration is
sought and the context in which the term is used, or is
intended to be used, not in the abstract or on the basis of
guesswork. In re Abcor Development Corp., 588 F.2d 811,
200 USPQ 215, 218 (CCPA 1978); In re Remacle, 66 USPQ 1222,
1224 (TTAB 2002). In other words, the issue 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 USPQ 1314, 1316-1317 (TTAB 2002);
In re Patent & Trademark Services Inc., 49 USPQ2d 1537,

4 Applicant submitted the Declaration of Robert Bone, applicant’s
Vice President of Marketing, to explain that applicant refers to
CASCADING REELS as a five-reel video machine to provide a point
of reference for its customers. In this way, the customers can
analogize or understand CASCADING REELS video slot machines as an
alternative to older slot machines. (Bone Dec., ¶8).
Serial No. 78278183
8
1539 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313, 1317 (TTAB 1990); In re
American Greetings Corp., 226 UPSQ 365, 366 (TTAB 1985).
When two or more merely descriptive terms are
combined, the determination of whether the composite mark
also has a merely descriptive significance turns on the
question of whether the combination of terms evokes a new
and unique commercial impression. 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. See, In re
Tower Tech, Inc., supra (SMARTTOWER merely descriptive of
commercial and industrial cooking towers); In re Sun
Microsystems Inc., 59 USPQ 1084 (TTAB 2001) (AGENTBEANS
merely descriptive of computer programs for use in
developing and deploying application programs); In re
Putnam Publishing Co., 39 USPQ2d 2021 (TTAB 1996) (FOOD &
BEVERAGE ONLINE merely descriptive of new information
services in the food processing industry).
“On the other hand, if one must exercise mature
thought or follow a multi-stage reasoning process in order
to determine what product or service characteristics the
term indicates, the term is suggestive rather than merely
descriptive. In re Tennis in the Round, Inc., 199 USPQ
Serial No. 78278183
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496, 497 (TTAB 1978). See also, In re Shutts, 217 USPQ
363, 364-365 (TTAB 1983); In re Universal Water Systems,
Inc., 209 USPQ 165, 166 (TTAB 1980).
In many instances, such as this case, the line between
descriptive and suggestive marks is not clear. Determining
whether a mark is merely descriptive or suggestive may
require the drawing of fine lines similar to making
distinctions among many shades of gray. In any given
situation, this process may be hazy, subjective, and
difficult to articulate. Accordingly, doubts as to
registrability are resolved in favor of applicants. In re
American Standard Inc., 223 USPQ 353, 355 (TTAB 1984); In
re Micro Instrument Corp., 222 USPQ 252, 255 (TTAB 1984);
In re The Officers’ Organization, 221 USPQ 184, 186 (TTAB
1983).
In determining whether a mark is merely descriptive,
it is necessary to understand the products that the mark
purportedly describes. We have gleaned the following
background information from The Best Online Casinos, the
Casino City Times,5 the Win Your Wager.com online gambling
glossary websites, and the Robert Bone Declaration:6

5 http://brokpoo.casinocitytime.com/articles/272442.html.
6 www.winyourwager.com/gambling_glossary.html#r.
Serial No. 78278183
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1. There are hundreds of different types and
variations of slot machines (e.g., single line, three
line, 3 or 5 reel, progressives, bonus games, etc.).

2. Three reel slot machines are the classic slot
machines.

3. A “reel” is a wheel inside a slot machine window
on which the slot machine symbols are printed.

4. Many slot machines also have two or more
horizontal rows across the vertical reels. The
additional rows, above and below the payout row or pay
line, allow players to see how close they came to
winning.

5. A slot machine can have one or more pay lines on
its reels. The pay line is where the winning
combinations of symbols line up.

6. On the classic slot machines, the pay line is the
center row of symbols across the vertical reels.

7. If a machine has more than one pay line, a player
can activate additional pay lines by increasing the
bet.

8. The spinning reel play action and the sequential
left to right stops of video slot games are an
illusion created to stimulate the player’s senses and
add an additional element of intrigue.

9. The columns on video slot machines are referred
to as “reels” to provide a point of reference to
customers and players.

We find that CASCADING REELS is merely descriptive of
applicant’s slot machines because it directly and
immediately identifies a feature of the slot machine games:
that is, the reel symbols cascade (or appear to cascade)
into the pay lines.
Serial No. 78278183
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The fact that applicant’s slot machines do not have
actual mechanical reels does not eliminate the
descriptiveness of the word “Reels” because the video
displays are representations of reels. In fact, applicant
refers to the video displays as reels so that its customers
and players have a point of reference or comparison. (Bone
Dec., ¶8). In it’s KABOOM! web page, applicant states that
“In place of traditional reels, the symbols drop down into
the reels from above.” In other words, the video graphics
replace the reels. In addition, many video slot machines
simulate the spinning action of the mechanical reel.
(Casino City Times web page). Accordingly, when used in
connection with slot machines, the term “reels” encompasses
both mechanical reels and simulated video reels.
The word “Cascade” has the following meanings:
1. “downward flow of something” (MSN.Encarta
Dictionary);

2. “move on to the next thing: to move on to others
in succession • If it is not claimed, the jackpot
will cascade down to the holder of the next
numbers drawn”; (MSN.Encarta Dictionary);

3. “to fall from one level to the next.”
(www.wordsmyth.net).

Applicant’s description of how the KABOOM! slot
machine works set forth below encompasses the preceding
Serial No. 78278183
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definitions, particularly “to fall from one level to the
next.”
In the place of traditional wheel
spins, the symbols drop down into the
reels from above. The 1st reel drops
first, then the 2nd, and so on until all
5 reels have dropped symbols. Once the
symbols have all dropped, all winning
combinations are highlighted and paid
as normal. Then the added feature
kicks in! Each symbol that takes part
in a winning combination disappears,
and the symbols above them drop down to
take their place. (Emphasis added).

When used in connection with slot machines, the term
CASCADING REELS describes a significant feature of the slot
machine game (i.e., the reels or the reel symbols drop down
or cascade). The combination of the two words “Cascading”
and “Reels” keep their ordinary meaning. They do not form
a new or incongruous meaning.
The applicant’s own promotional material illustrates
the descriptive character of the mark. In its web pages,
applicant refers to “Cascading Reels” as a feature or part
of the game. For example, in the KABOOM! web page, the
game features are listed as follows:
Serial No. 78278183
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Kaboom™!

• Five-reel video slot available in 20 line,
20/40/100/180/200/400 coin versions

• Cascading Reels™ Feature

• Built on CPU-NXT™ technology

In other web pages, “Cascading Reels” is displayed in the
features section as “Cascading reels” (no italics, no ™) or
“5RV cascading reels.” Because “Cascading Reels” is listed
as one of several features, the impact of that use will be
perceived as a descriptive use, rather than as a trademark.7
The web pages with reviews of slot machines submitted
by the examining attorney and noted above evidence the
descriptive nature of the term CASCADING REELS because they
demonstrate that the writers understand the concept of
cascading reels vis-à-vis a slot machine. Those web pages
include the following excerpts:
[i]nstead of traditional wheel spins,
jewel symbols will cascade down on the
reels from above. . . The cascade will
repeat until there are not any winning
combinations formed.

[n]ew symbols cascade down form the
stop of the screen to refresh the grid
of symbols.

Hitting the spin button does not
display the usual whirling wheels, but

7 Use of the superscript ™ does not make unregistrable matter
into a trademark. In re Remington Products Inc., 3 UPSQ2d 1714,
1715 (TTAB 1987).
Serial No. 78278183
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a blank opening from which the
sparkling jewels cascade from the top
of the screen into reel positions.

Applicant’s argument by analogy that if the
application for the mark TUMBLING REELS for gaming machines8
is not descriptive and has been approved for publication,
then CASCADING REELS is not descriptive and should be
approved for publication is unavailing. We must decide
each case on its own merits. Even if some other
applications with characteristics similar to CASCADING
REELS have been approved for publication, or registered,
the allowance of such applications does not bind the Board.
In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564,
1566 (Fed. Cir. 2001). Moreover, the fact that fact that
applicant is the first or only user of the term CASCADING
REELS, this is does not justify registration of the term
where the only significance projected by the term is merely
descriptive, as we find to be the case here. In re
National Shooting Sports Foundation, Inc., 219 USPQ 1018,
1020 (TTAB 1983).
Upon reviewing all of the evidence, we find that
CASCADING REELS used in connection with slot machines is
merely descriptive. The words “Cascading” and “Reels”
Serial No. 78278183
15
describe features of the slot machine game (i.e., the game
depicts reel symbols that cascade). The combination of the
words does not create an inherently distinctive combination
because both words keep their commonly understood meaning.
Applicant’s own descriptive use of CASCADING REELS and
third-party reviews of the slot machine games that use the
words “Cascade” and “Reels” in their ordinary sense to
describe the slot machine games, persuade us that the mark
is merely descriptive.
Decision: The refusal to register is affirmed.

8 Application Serial No. 78757454, filed November 18, 2005, under
Section 1(b). The examining attorney required a disclaimer of
the word “Reels.”