Golf Pro, Inc.

Trademark Trial and Appeal Board

Jan 29, 1998

No. 74579163 (T.T.A.B. Jan. 29, 1998)

Paper No. 12
CEW
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB JAN 29, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Golf Pro, Inc.
___________
Serial No. 74/579,163
___________
Marie V. Driscoll of Robin, Blecker, Daley & Driscoll for
applicant.
Amos T. Matthews, Trademark Examining Attorney, Law Office
108 (David Shallant, Managing Attorney).
____________
Before Simms, Hohein and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Golf Pro, Inc. has filed a trademark application to
register the mark GOLF PRO for “hotel and condominium
services featuring golf.”1
The Trademark Examining Attorney has finally 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 its services.

1 Serial No. 74/579,163, in International Class 42, filed September 27,
1994, based on an allegation of a bona fide intention to use the mark in
Serial No. 74/579,163
2
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
The test for determining whether a mark is merely
descriptive is whether the involved term immediately conveys
information concerning a quality, characteristic, function,
ingredient, attribute or feature of a product or service.
In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979); In re
Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986). It is
not necessary, in order to find a mark merely descriptive,
that the mark describe each feature of the goods, only that
it describe a single, significant quality, feature, etc. In
re Venture Lending Associates, 226 USPQ 285 (TTAB 1985).
Further, it is well-established that the determination of
mere descriptiveness must be made not in the abstract or on
the basis of guesswork, but in relation to the goods or
services for which registration is sought, the context in
which the mark is used, and the impact that it is likely to
make on the average purchaser of such goods or services. In
re Recovery, 196 USPQ 830 (TTAB 1977).
The record includes excerpts of articles from the
LEXIS/NEXIS database which support the Examining Attorney’s
contention that GOLF PRO is a term recognized by the
relevant public as referring to a professional golfer and

commerce. The application includes a disclaimer of the term GOLF apart
Serial No. 74/579,163
3
that hotels, particularly resort hotels, employ golf pros.2
Following are several examples:
. . . ocean-view accommodation, plus free golf,
use of golf kit and motorised (sic) caddy, and two
practice rounds with a hotel golf pro. Book
through Elegant Resorts . . . Daily Mail, March
26, 1994.
“The most consistent factor in Mexico is the
weather,” says Wayne Sisson, golf pro at the
Acapulco Princess Hotel and Resort and its sister
course at the neighboring Pierre Marques Hotel.
“Its a good situation for a golfer.” Newsday,
November 17, 1991.
Hotels boast of offering golf pros and tennis
pros, but softball pros? The new downtown hotel
Checkers says in a newspaper ad that job . . .
Los Angeles Times, February 1, 1989.
Applicant readily admits that “[t]here are individuals
who are golf professionals”; that “[t]hey are sometimes
referred to as golf pros”; that “[s]ome hotels have golfing
facilities”; and that “[s]ome of these hotels employ golf
pros.” Applicant contends, however, that:
GOLF PRO, [considered in connection with hotel and
condominium services], could suggest one of
several things - that the golf courses available
at the hotel or condominium are of a professional
quality; that the courses are designed for use by
experienced golfers and not ‘hackers’; that a golf
professional is employed to advise players; or
more generally that this is a serious place,
intended for pros who take their golf seriously.

from the mark as a whole.
2 In his brief the Examining Attorney stated that “a person achieves the
title of ‘GOLF PRO’ through years of playing and has completed a
certification process by a golf association. Today’s golf players have
come to recognize that GOLF PRO identify (sic) a certify (sic)
professional golfer. Most golf courses, private or public[,] have a
GOLF PRO on staff.” While the Examining Attorney provided no evidence
in support of these statements, we find such information unnecessary to
our decision in this case.
Serial No. 74/579,163
4
Arguing that the Examining Attorney’s position is
inconsistent with prior Office practice, applicant listed
numerous third-party registrations which include either the
term GOLF or the term PRO. However, such a list does not
place those third-party registrations properly before us in
this record and, thus, we have not further considered these
registrations.3 We note, moreover, that our decision would
be unaffected by consideration of these registrations as
none includes the mark GOLF PRO, there is no indication of
whether any terms are disclaimed in the registration, and,
where goods or services are indicated, the registrations do
not pertain to the same or similar services as herein.
Furthermore, each case must be decided on its merits based
on the record in that case.
We note applicant’s disclaimer in the record of the
term GOLF. However, in connection with the present case, we
find GOLF PRO to be a unitary phrase. As applicant admits,
a GOLF PRO is an individual who is a professional golfer,
and hotels with golfing facilities may employ a GOLF PRO.
Further, while applicant contends that GOLF PRO, considered
in connection with its services, could suggest several
different things, applicant provides no evidence indicating

3 In order to make registrations of record, soft copies of the
registrations themselves, or the electronic equivalent thereof, i.e.,
printouts of the registrations taken from the electronic records of the
Patent and Trademark Office’s (PTO) own data base, must be submitted.
See, Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230 (TTAB 1992).
Serial No. 74/579,163
5
that consumers would make these other associations. Rather,
the record establishes that the term GOLF PRO, as used in
the press to refer to such individuals, is likely to be
perceived by the relevant public as referring to a
professional golfer.
It is our view that, when applied to applicant’s
services, the entire phrase GOLF PRO immediately describes,
without conjecture or speculation, a significant feature or
function of applicant’s services, namely, either that the
golf “featured” in connection with applicant’s hotels and
condominiums includes the services of a golf pro to instruct
guests and residents, or that the hotel or condominium is
owned or run by golf pros. Either of these connotations
renders the term GOLF PRO merely descriptive of a
significant aspect of the hotel or condominium services.
Nothing requires the exercise of imagination, cogitation,
mental processing or gathering of further information in
order for purchasers of and prospective customers for
applicant’s services to readily perceive the merely
descriptive significance of the term GOLF PRO as it pertains
to those services.
Serial No. 74/579,163
6
Decision: The refusal under Section 2(e)(1) of the Act
is affirmed.
R. L. Simms
G. D. Hohein
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board