Mailed:
August 9, 2006
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Aristocrat Technologies Australia PTY Limited
________
Serial No. 76460409
_______
Scott M. Hervey of Weintraub Genshlea Chediak Sproul for
Aristocrat Technologies Australia PTY Limited.
Sonya B. Stephens, Trademark Examining Attorney, Law Office
108 (Andrew Lawrence, Managing Attorney).
_______
Before Bucher, Grendel and Walsh, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Aristocrat Technologies Australia PTY Limited seeks
registration on the Principal Register of the mark WILD
SUIT for goods identified in the application, as amended,
as follows:
“gaming devices, namely, gaming machines and
associated software for use therewith, to
enable the gaming machine to run” in
International Class 9.1
1 Application Serial No. 76460409 was filed on October 22,
2002 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 76460409
- 2 -
This case is now before the Board on appeal from the
final refusals of the Trademark Examining Attorney to
register this proposed mark (i) based upon the ground that
the term is merely descriptive when considered in relation
to applicant’s goods, i.e., that the term WILD SUIT
immediately informs potential purchasers about a
characteristic or feature of applicant’s identified goods,
and (ii) based upon applicant’s failure to respond
unequivocally to the requirement as to whether or not the
proposed mark has “any meaning in relation to the goods” as
requested under Trademark Rule 2.61(b).
Applicant and the Trademark Examining Attorney each
filed a brief on the issues presented in this appeal, but
applicant did not request an oral hearing before the Board.
Requirement under 37 C.F.R. § 2.61(b)
In her first Office action, the Trademark Examining
Attorney asserted that applicant “must indicate the
relevance of the wording ‘WILD SUIT,’ individually and
collectively, in its mark, including whether such term has
any significance in relation to the goods.” She cited as
authority for this request 37 C.F.R. Section 2.61(b).
Applicant responded, “ … that the instant application
is based on an intent to use. Applicant’s gaming devices
Serial No. 76460409
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generally feature games based on traditional reel-type slot
machine games that may contain features evocative of
familiar elements. WILD SUIT has no direct meaning in
relation to the identified goods.”
In her Final Office action, the Trademark Examining
Attorney made this response a basis for refusing
registration:
The applicant has failed to indicated [sic]
whether the terms, “WILD” and “SUIT,”
individually have any significance in
relation to the goods. Additionally, the
applicant’s response that “WILD SUIT has not
[sic] direct meaning in relation to the
identified goods” (emphasis added [by the
Trademark Examining Attorney]) is ambiguous.
The requirement made in the first Office
action was that the applicant [should]
indicate whether “WILD SUIT” had any meaning
in relation to the goods; not whether “WILD
SUIT” had any direct meaning.
At this stage of the prosecution, applicant appeared
to be hewing carefully to narrowly-drawn semantics (e.g.,
“traditional reel-type slot machine games that may contain
features evocative of familiar elements,” answering a query
as to “any meaning” with “no direct meaning”), suggesting
that applicant was being evasive because it feared that a
totally truthful response might well support the statutory
refusal under Section 2(e)(1), thereby hurting its chances
of getting a registration. The purpose of the Trademark
Serial No. 76460409
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Examining Attorney’s request for more information was most
clear. Yet applicant’s hair-splitting responses seemed
calculated to interject just enough ambiguity into the
record to avoid a falsehood while defeating the ability of
the Examining Attorney to prove descriptiveness in an
Intent-to-Use application without an allegation of use.
Nonetheless, in its request for reconsideration,
applicant appears finally to have dropped whatever
ambiguity the Trademark Examining Attorney identified in
earlier responses, by saying: “The wording WILD SUIT has
no significance in relation to the identified goods.”
Accordingly, it seems as if applicant has complied
with the Trademark Examining Attorney’s rather narrowly-
worded request for information under Rule 2.61(b).2 Hence,
as to this refusal to register, we reverse the Trademark
Examining Attorney.3
2 Given the powerful reach of Trademark Rule 2.61(b),
especially when faced with an Intent-to-Use application where
applicant appears to be gaming the prosecution, rather than
restricting herself to a binary query, the Trademark Examining
Attorney might well have required applicant to submit any
literature or promotional materials it has on this proposed
gaming device, to submit any extant portions of applicant’s
business plan dealing with bringing this reel-type slot machine
to market, while querying which features of non-machine games
might be ‘evoked’ by the anticipated play of this gaming device,
etc.
3 Previous counsel proffered all of the quoted responses.
Current counsel merely filed the appeal brief.
Serial No. 76460409
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Descriptiveness
A mark is merely descriptive, and therefore
unregistrable pursuant to the provisions of Section 2(e)(1)
of the Trademark Act, 15 U.S.C. § 1052(e)(1), if it
immediately conveys information of significant ingredients,
qualities, characteristics, features, functions, purposes
or uses of the goods or services with which it is used or
is intended to be used. In re Abcor Development Corp.,
588 F.2d 811, 200 USPQ 215, 217 (CCPA 1978). See also In
re Nett Designs, 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001); and 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”]. Hence, the ultimate question before
us is whether this term conveys information about a
significant characteristic or feature of applicant’s goods
with the immediacy and particularity required by the
Trademark Act.
A mark is suggestive, and therefore registrable on the
Principal Register without a showing of acquired
distinctiveness, if imagination, thought or perception is
required to reach a conclusion on the nature of the goods
Serial No. 76460409
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or services. See In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987); and In re Bed & Breakfast Registry,
791 F.2d 157, 229 USPQ 818, 819 (Fed. Cir. 1986).
The question of whether a particular term is merely
descriptive is not decided in the abstract. That is, when
we analyze the evidence, we must keep in mind that the test
is not whether prospective purchasers can guess what
applicant’s goods are after seeing applicant’s mark alone.
In re Abcor, supra at 218 [“Appellant’s abstract test is
deficient – not only in denying consideration of evidence
of the advertising materials directed to its goods, but in
failing to require consideration of its mark ‘when applied
to the goods’ as required by statute”]; In re Home Builders
Association of Greenville, 18 USPQ2d 1313 (TTAB 1990); and
In re American Greetings Corp., 226 USPQ 365, 366 (TTAB
1985). Rather, the proper test in determining whether a
term is merely descriptive is to consider the alleged mark
in relation to the goods or services for which registration
is sought, the context in which the mark is used, and the
significance that the mark is likely to have on the average
purchaser encountering the goods or services in the
marketplace. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); In re Intelligent
Serial No. 76460409
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Instrumentation Inc., 40 USPQ2d 1792 (TTAB 1996); In re
Consolidated Cigar Co., 35 USPQ2d 1290 (TTAB 1995); In re
Pennzoil Products Co., 20 USPQ2d 1753 (TTAB 1991); In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); and
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979).
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
Gould Paper Corp., 834 F.2d 1017, 5 USPQ2d 1110, 1112 (Fed.
Cir. 1988) [SCREENWIPE generic for wipes that clean
computer and television screens]; In re Tower Tech, Inc.,
64 USPQ2d 1314, 1318 (TTAB 2002) [SMARTTOWER merely
descriptive of commercial and industrial cooling towers];
In re Sun Microsystems Inc., 59 USPQ2d 1084, 1087 (TTAB
2001) [AGENTBEANS merely descriptive of computer programs
for use in development and deployment of application
programs]. Furthermore, a mark need not describe the full
scope of the applicant’s goods to be found merely
Serial No. 76460409
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descriptive. In re Oppendahl & Larson LLP, 373 F.3d 1171,
71 USPQ2d 1370, 1371-72 (Fed. Cir. 2004).
Applicant argues that the Trademark Examining Attorney
has failed to meet her burden of establishing that
applicant’s mark is merely descriptive when applied to its
goods. Applicant argues that the Trademark Examining
Attorney’s conclusion is based on assumptions not supported
by facts in evidence. While the Trademark Examining
Attorney contends that “applicant’s gaming machines have a
function whereby the player is able to determine the
equivalence or value of a suit of cards,” applicant argues
that it is improper for the Trademark Examining Attorney to
base her descriptiveness determination on sheer
speculation. Applicant points out that in this intent-to-
use application, it has not introduced a specimen or any
other material supporting the position of the Trademark
Examining Attorney. On the other hand, applicant argues
that applicant has “declared under oath that the words WILD
SUIT, both individually and collectively, have no
significance in relation to the identified goods.”
As was the case in an earlier Board decision cited by
the Trademark Examining Attorney, In re Copytele Inc., 31
USPQ2d 1540, 1541 (TTAB 1994), “we have of record no
Serial No. 76460409
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specimens of use nor product literature illustrating
applicant’s goods.” Accordingly, as urged by the Trademark
Examining Attorney herein, we must look to dictionary
definitions and Internet evidence made of record in order
to make conclusions about the likely nature of applicant’s
goods.
In this case, we start with the Trademark Examining
Attorney’s dictionary entries of the individual words:
wild (wìld) adjective
Games. Having an equivalence or value determined by the cardholder's
choice.4
wild adjective
… 7. of a playing card: able to represent any card designated by the
holder.5
wild adjective
… 16. CARD GAMES with value assigned by player: used to describe
a playing card that has any value that the player using it wishes to give it.
•Jokers are wild6
wild adjective
… 17. Cards (of a card) having its value decided by the wishes of the
players.7
wild adjective
… 13. Games. Having an equivalence or value determined by the
cardholder’s choice. Playing poker with deuces wild.8
4 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, Third
Edition 1992.
5 MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.m-w.com/cgi-
bin/dictionary?book=dictionary&va=wild
6 MSN ENCARTA, http://encarta.msn.com/encnet/features/
dictionary/DictionaryResults.aspx?refid1861713197
7 http://infoplease.com/apd/A0738226.html
8 http://dictionary.reference.com/search?q=wild
Serial No. 76460409
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suit (s¡t) noun
Games. Any of the four sets of 13 playing cards (clubs, diamonds, hearts,
and spades) in a standard deck, the members of which bear the same
marks.9
suit noun
6.a. all the playing cards in a pack bearing the same symbol … 6.c. all the
card or counters in a particular suit held by one player
6.d.
the suit lead 10
suit noun
3. CARD GAMES set of playing cards: one of four different sets of
playing cards in a pack11
suit (PLAYING CARDS) noun
any of the four types of cards in a set of playing cards, each having a
different shape printed on it: The four suits in a pack of cards are hearts,
spades, clubs and diamonds.12
suit noun
5. all the playing cards of a single kind in the deck. Hearts is one suit.13
suit noun
7. Cards a. one of the four set or classes (spades, hearts, diamonds and
clubs) into which a common deck of playing cards is divided. b. the
aggregate of cards belonging to one of these sets held in a player’s hand at
one time: spades were his long suit. c. one of various sets or classes into
which less common decks of cards are divided, as lances, hammers, etc.,
found in certain decks formerly used or used in fortune telling.14
Additionally, the Trademark Examining Attorney
provided for the record website printouts showing that the
combined term “wild suit” is used to describe a feature of
a number of different games played with cards and tiles:
9 THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH LANGUAGE, Third
Edition 1992.
10 MERRIAM-WEBSTER ONLINE DICTIONARY, http://www.m-w.com/cgi-
bin/dictionary?book=dictionary&va=suit
11 MSN ENCARTA, http://encarta.msn.com/encnet/features/
dictionary/DictionaryResults.aspx?refid1861716788
12 CAMBRIDGE DICTIONARIES ONLINE, http://dictionary.cambridge.org/
define.asp?key=79708&dict=CALD
13 WORDSMYTH DICTIONARY-THESAURUS, http://www.wordsmyth.net/live/
home.php?script=search&matchent=suit&matchtype=exact
14 http://infoplease.com/apd/A0678677.html
Serial No. 76460409
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Target® is a rummy game like nothing you’ve ever played. One deck
of 80 “Playing” cards are numbered 0 though 9 in 4 colorful suits, plus a
5th “wild” suit, and are used for making melds.15
16
Cardz is a set of 78 letter cards. There are three basic suits with 22
letters in each suit (one of everything except J, Q, X, and Z). There is
also a wild suit which has the difficult letters, one of each vowel, and
three totally wild cards.17
Games: Ticket To Ride
… There is also a deck containing cards of nine suits: the eight route
colors found on the board, and a ninth “Wild” suit. Players start with
four of these cards and a pile of small, plastic trains.18
WILD CARDS
These suits are different than the rest. Any tile in a wild suit will match
with any other tile in the same suit.19
BRIDGE
How It Works:
Bridge is played with four people (two sets of partners). The object is to figure
out how good your combined hands are. You do this through your bids, which
are simple declarations like "two spades." The highest bidder establishes what
the "trump," or the wild suit, will be, and she must claim as many "tricks" (by
playing the highest card or trump) as she predicted she would during the bidding
process. Confused? I won't even begin to explain scoring.20
Sentence Building
… Example: Let's say that HEARTS is not assigned a column.
If the student has the 4 of Hearts, they [sic] can use only the
FOURTH word (because of the number 4) in ANY column
(because HEARTS is a wild suit).21
15 http://www.enginuity.com/target.htm
16 http://www.wunderland.com/WTS/Ginohn/games/Zarcana/rules.html
17 http://www.boardgamegeek.com/game/10764
18 http://www.defectiveyeti.com/archives/000855.html
19 http://www.cmtcanada.com/connect/games/swf/cmt
%20mahjongg.swf
20 http://www.wweek.com/html/lifefeature060999.html
21 http://www.angelfire.com/blog2/yamajet/new_page_2.htm
Serial No. 76460409
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Community Card and Wilds:
The suit of the community card is wild. However, the community card
itself is not wild. Also, if any player has three or more cards of the wild
suit in his/her hand, none of those player's cards are wild.22
A player who keeps an Ace may draw up to 4 cards, otherwise a maximum of 3
new cards is allowed. If 4 cards are drawn to a WILD card, the wild card
becomes an Ace with a wild suit after the draw.23
Thus, the earlier dictionary entries demonstrate that
both words (“wild” and “suit”) individually have
descriptive meanings when applied to card games. With
these Internet excerpts, the Trademark Examining Attorney
has also demonstrated the highly descriptive nature of this
combined term as it relates to card games. The combination
of the terms “wild” and “suit” in the composite phrase WILD
SUIT creates no double entendre, ambiguity or unique
commercial impression so as to remove the mark from the
category of being merely descriptive in the context of card
games. That is, as used in the common parlance, the
composite phrase readily and immediately describes a
salient feature or characteristic of card games.
Yet, applicant argues that “[n]one of [these]
references introduced by the Examiner implicate a computer
based gaming machine for use in casinos.”
22 http://21ace.com/phpBB2/viewtopic.php?t=860&highlight=
23 http://archive.mash.acalltoduty.com/index.cgi?5088@
mash.acalltoduty.com::191
Serial No. 76460409
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We find that applicant’s position that this term is
only descriptive of games played with actual cards misses
the point. While the record shows that a “wild suit” is
traditionally a feature of games played with cards,
applicant’s gaming machines could well incorporate features
of such a traditional card game, resulting in a reel-type
slot machine that uses card suits and shares other features
frequently used when playing traditional card games. If
this were the case, then the proposed mark involves no
ambiguity or incongruity, and no thought or perception is
required to make the mental leap from applicant’s proposed
mark to its identified goods.
Applicant carefully avoids disclosing anything about
the nature of the gaming device, but instead simply
contends the games are not what the Trademark Examining
Attorney assumes, speculates or concludes that they are.
Applicant does not assert that it does not know precisely
what the goods are, or will be. However, applicant does
contend that the Trademark Examining Attorney is incorrect
in her speculation that “that the goods are gaming devices
in which the player may determine the equivalence of value
of a suit of cards.” Applicant’s request for
reconsideration, p. 1. Applicant asserts that the mark is
Serial No. 76460409
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not merely descriptive of its goods because its goods are
gaming machines and associated software for operating the
gaming machines and “this software has nothing to do with
cards, the suits of cards, or any equivalency thereof.”
Id. Of course, we are not so much interested in the
workings of the “operating software” as we are with the
look and feel the casino player experiences when
interacting with the gaming device. In this case, the
applicant’s goods include broadly-identified goods,24 which
could clearly include gaming machines in which the player
may determine the equivalence or value of a suit of cards
(i.e., games which feature a “wild suit”). Moreover, even
if an algorithm contained within the software permitted the
machine randomly to determine the value of a suit of cards,
this term would still be merely descriptive. Accordingly,
the Trademark Examining Attorney argues that this proposed
mark describes a characteristic or feature of the
identified goods.
After careful consideration of the record and the
arguments herein, we find the Trademark Examining
Attorney’s arguments persuasive.
24 We note that applicant amended its identification of goods
with an outstanding refusal based on mere descriptiveness, and
did not take the opportunity to narrow the identification of
goods to eliminate reel-type slot machines that use card suits as
the symbols used to create a winning match, for example.
Serial No. 76460409
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As is industry practice, we assume that applicant’s
mark will be embossed directly onto the gaming devices where
the mark would be seen by the end-users on the casino floor.
The evidence supports a conclusion that when prospective
purchasers encounter this term on applicant’s goods, they
will immediately know that the game features a “wild suit.”
Therefore, applicant’s term is merely descriptive of its
goods.25
Conclusion
We find ourselves in agreement with the position of
the Trademark Examining Attorney. Based on this record, we
find that the term WILD SUIT used on gaming devices
immediately conveys information as to a significant feature
of the machine. Stated differently, given the clear
meaning of the term WILD SUIT in the context of casino
gaming machines, it takes no imagination on the part of a
25 If, as argued by applicant, the Trademark Examining
Attorney is indeed wrong in her speculation that the game, as
experienced by the player, may feature a “wild suit,” perhaps the
Examining Attorney should have made the alternate refusal that,
in this event, the term would be deceptively misdescriptive of
the goods – also under Section 2(e)(1) of the Act. In such a
case, it appears that the term WILD SUIT would misdescribe a
feature or characteristic of the machine. If prospective end-
users of the gaming machine who are acquainted with the concept
of a “wild suit” from card games find it plausible that the
casino game is played with a “wild suit,” they would most likely
find themselves misled by this term used in conjunction with such
a reel-type slot machine. In re Berman Bros. Harlem Furniture
Inc., 26 USPQ 1514 (TTAB 1993) [the term, FURNITURE MAKERS, is
deceptively misdescriptive for retail furniture store services,
not including the manufacture of furniture].
Serial No. 76460409
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casino gambler to conclude that the game has a wild suit.
Accordingly, we find that Section 2(e)(1) of the Trademark
Act bars registration herein.
Decision: While we reverse the refusal to register
based on applicant’s alleged failure to respond to the
Trademark Examining Attorney’s request for information
under Rule 2.61(b), the refusal to register this mark on
the Principal Register under Section 2(e)(1) of the Lanham
Act is hereby affirmed.
