Precision Resource Co., LLC

Trademark Trial and Appeal Board

Jan 11, 1999

No. 74717937 (T.T.A.B. Jan. 11, 1999)

Paper No. 12
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 11,98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Precision Resource Company, LLC.
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Serial No. 74/717,937
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Michael W. Hicks of Blakely, Sokoloff, Taylor & Zafman for
Precision Resource Company, LLC.
David M. Marmelstein, Trademark Examining Attorney, Law
Office 103 (Michael A. Szoke, Acting Managing Attorney).
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Before Simms, Cissel and Chapman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On August 21, 1995, applicant, a California limited
liability company doing business as “PRC Gaming Systems,”
filed the above-referenced application to register the mark
“PITBOSS” on the Principal Register for what was
subsequently identified by amendment as “computer hardware
and software for tracking and managing transactions in
single or multiple pit areas of a gaming establishment,” in
Class 9. The basis for the application was applicant’s
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assertion that the mark had been in use in commerce since
October 5, 1994.
This application is now before the Board on appeal
from a final refusal to register under Section 2(e)(1) of
the Lanham Act on the ground that as applied to applicant’s
goods, the mark sought to be registered is merely
descriptive of them. The Examining Attorney contends that
“’PITBOSS’ identifies either the person who will use the
software (the ‘Pit boss’) or the function performed by the
software (the job of the ‘pit boss’).” (March 4, 1996
Office Action, p.2)
In support of the refusal, the Examining Attorney made
of record a dictionary definition of “pit boss” as “a
casino employee who supervises gaming activity.” Also
submitted were excerpts retrieved from the Nexis database
of published articles. These articles show that a pit boss
engages in a number of activities related to the
supervision of gambling, e.g., he or she stands behind and
supervises the dealers, watches people on the floor,
strolls around the gaming tables, and in general oversees
all of the gambling activities in his or her area of the
casino.
Of particular significance to the Examining Attorney
are the original specimens of record, printed promotional
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materials submitted when the application was first filed.
In these specimens, which are apparently directed to the
people who manage casinos, applicant describes the product
on which it uses its “PITBOSS” trademark. Explaining that
its PitTrak Player Tracking System “automatically gathers
critical player data right from your gaming tables,”
applicant characterizes the information available from its
devices as “data your accounting, marketing and security
departments need.” Applicant states that “…using the
optional PitBoss Management Workstation, your pit
supervisors, surveillance specialists, or managers can
monitor table activity at the pit, casino, or even
enterprise level.” Thus, contends the Examining Attorney,
the computer products applicant sells under this mark are
designed for use by casino pit bosses to help them do what
pit bosses do with regard to tracking gaming transactions.
Neither applicant nor the Examining Attorney disputes
the test for determining whether registration may be
refused under Section 2(e)(1) based on mere
descriptiveness. A mark is merely descriptive of the goods
on which it is used if it forthwith identifies a quality,
characteristic, function, feature, purpose or use of the
goods. In re MetPath Inc., 223 USPQ88 (TTAB 1984).
Another principle which is applicable to the facts in the
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case at hand is the rule that whether a mark is merely
descriptive must be determined in relation to the goods
identified in the application, rather than in the abstract.
In re Omaha National Corp., 819 F.2d 1117, 2 USPQ2d 1859
(Fed. Cir. 1987). More specifically, marks have been found
to be unregistrable under Section 2(e)(1) of the Act if
they identify or describe the users or intended users of
the goods. Hunter Publishing Co. v. Caulfield Publishing
Ltd., 1 USPQ2d 1996 (TTAB 1986); In re Camel Manufacturing
Co., 222 USPQ 1031 (TTAB 1984).
In the instant case, the materials made of record make
it clear that pit bosses are the users of applicant’s
computer hardware and software, so the refusal to register
under Section 2(e)(1) is appropriate.
Citing In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB
1979), applicant argues that “PITBOSS” does not “convey an
immediate idea of an ingredient, quality, characteristic,
function or feature of the product in connection with which
it is used.” Further, applicant contends that its mark is
not merely descriptive because “some imagination, thought
and perception is required to reach a conclusion as to the
nature of the goods bearing the mark.” Neither of these
arguments is well taken.
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When considered in connection with the goods set forth
in the application, the mark is merely descriptive of the
goods because it identifies the aforementioned
characteristics or features of them. The test is not
whether someone presented with only the mark could
determine what the goods are simply by considering the
mark. The test is whether the mark provides someone who
knows what the goods are with information about their
characteristics. See In re Omaha National Corp., supra.
As noted above, the mark in the instant case tells
prospective purchasers of applicant’s computer hardware and
software that it is used by a pit boss in the performance
of the job functions of a pit boss.
Applicant makes other arguments to the effect that its
mark is not merely descriptive of its goods, but rather is
only suggestive of a feature or characteristic of them.
None of these arguments is persuasive. The combination of
the words “PIT” and “BOSS” into the single term “PITBOSS”
does not result in any incongruity or new meaning which is
different from the connotation of “PIT BOSS” as a two-word
term. The fact that pit bosses have other duties in
addition to monitoring the gaming activity levels that
applicant’s computer hardware and software tracks and
manages does not make the term sought to be registered any
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less descriptive of that particular aspect of the duties of
a pit boss.
Because we have found the first basis offered by
the Examining Attorney to constitute a proper reason for
affirming the refusal to register under Section 2(e)(1) of
the Act, we do not need to discuss the alternative theory
under which he found the mark to be merely descriptive.
The mark is unregistrable under Section 2(e)(1) of the Act
because it names the intended user of the goods set forth
in the application. Accordingly, the refusal to register
is affirmed.
R. L. Simms
R. F. Cissel
\
B. A. Chapman
Administrative Trademark Judges,
Trademark Trial and Appeal Board
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