Ruffin Gaming, LLC

Trademark Trial and Appeal Board

Sep 17, 2002

No. 75899518 (T.T.A.B. Sep. 17, 2002)

September 17,2002
Paper No.12
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ruffin Gaming, LLC
________

Serial No. 75/899,518
_______

Richard J. Musgrave of Husch & Eppenberger, LLC. for Ruffin
Gaming, LLC.

Florentina Blandu, Trademark Examining Attorney, Law Office 112
(Janis O'Lear, Managing Attorney).
_______

Before Hohein, Walters and Bucher, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Ruffin Gaming, LLC has filed an application to
register the term "COIT TOWER" for "entertainment [services],
namely, live performances by a musical band, amusement arcades,
casino services, theatrical performances, vaudevilles and comedy
performances" in International Class 41 and "hotel services,
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/899,518
2
restaurant services, nightclub services, café services and
providing convention facilities" in International Class 42.1
Registration has been finally refused under Section
2(e)(1) of the Trademark Act, 15 U.S.C. §1052(e)(1), on the
basis that, when used in connection with applicant's services,
the term "COIT TOWER" is merely descriptive of them.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
It is well settled that a term is considered to be
merely descriptive of goods or services, within the meaning of
Section 2(e)(1) of the Trademark Act, if it forthwith conveys
information concerning any significant ingredient, quality,
characteristic, feature, function, purpose or use of the goods
or services. See, e.g., In re Gyulay, 820 F.2d 1216, 3 USPQ2d
1009 (Fed. Cir. 1987) and In re Abcor Development Corp., 588
F.2d 811, 200 USPQ 215, 217-18 (CCPA 1978). It is not necessary
that a term describe all of the properties or functions of the
goods or services in order for it to be considered to be merely
descriptive thereof; rather, it is sufficient if the term
describes a significant attribute or idea about them. Moreover,
whether a term is merely descriptive is determined not in the

1 Ser. No. 75/899,518, filed on January 20, 2000, based upon an
allegation of a bona fide intention to use such term in commerce. The
Ser. No. 75/899,518
3
abstract but in relation to the goods or services for which
registration is sought, the context in which it is being used on
or in connection with those goods or services and the possible
significance that the term would have to the average purchaser
of the goods or services because of the manner of its use. See
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979). Thus,
"[w]hether consumers could guess what the product [or service]
is from consideration of the mark alone is not the test." In re
American Greetings Corp., 226 USPQ 365, 366 (TTAB 1985).
Applicant, while acknowledging that a purpose behind
the statutory prohibition against registration of terms which,
when used in connection with particular goods or services, are
merely descriptive thereof "is to prevent others from
monopolizing descriptive terms in relation to the [goods or]
services," argues that "[t]here would be no breach of policy by
allowing the Appellant to register COIT TOWER for a casino
complex ... operating games of chance, restaurants, ... hotel
services, entertainment services and the like." In particular,
applicant contends that:
No one will be put at a competitive
disadvantage in the casino industry by being
unable to use COIT TOWER to describe their
casino complex .... The Appellant will not
be inhibiting competition ... if it receives
registration of the COIT TOWER mark. It

word "TOWER" is disclaimed.

Ser. No. 75/899,518
4
would be an anomaly for people in the
industry to use COIT TOWER to describe the
aforementioned services. The reason and
public policy behind the non-registrability
of [merely] descriptive marks would not be
breached by allowing the Appellant
registration of its mark in this case.

Furthermore, as to the Examining Attorney's specific
contention that the term "COIT TOWER" is merely descriptive of
applicant's services because such services are likely to depict
or feature the well known, if not famous, Coit Tower landmark in
San Francisco, applicant asserts that the Examining Attorney
"committed error by reviewing Appellant's service mark in
relation to the theme rather than to the services."2 According
to applicant:

2 Applicant, in its brief, additionally refers to a list of third-party
registrations which it submitted with its request for reconsideration.
Applicant maintains that the list demonstrates that "the United States
Patent and Trademark Office [('PTO')] has allowed registrations to
exist on the Principal Register for, inter alia, PARK AVENUE," as well
as such other terms as "BOURBON STREET," "SOUTH BEACH," "SAHARA" and
"RIVIERA." In particular, applicant insists that "the Principal
Register contains numerous registrations containing locations, places
or things as part of the marks used in relation to, inter alia, casino
services." While recognizing that "each mark must be evaluated on its
own merits," applicant urges that "it is entitled to consistency in
... practice and procedure" from the PTO and that "its mark is just as
entitled to receive trademark protection as any of these other marks."
Although the Examining Attorney has not addressed any of applicant's
contentions in this regard, it is pointed out that, inasmuch as the
Board does not take judicial notice of third-party registrations, the
submission at this stage of a mere list thereof "is insufficient to
make them of record." In re Duofold Inc., 184 USPQ 638, 640 (TTAB
1974). The proper procedure, instead, for making information
concerning third-party registrations of record is to submit either
copies of the actual registrations or the electronic equivalents
thereof, i.e., printouts of the registrations which have been taken
from the PTO's own computerized database. See, e.g., In re
Consolidated Cigar Corp., 35 USPQ2d 1290, 1292 n. 3 (TTAB 1995); In re
Ser. No. 75/899,518
5
The services for which the Appellant has
applied to register the mark relate to a
casino complex ... operating games of
chance, restaurants, ... hotel services,
entertainment services and the like. The
services rendered ... in no way relate to
the "Coit Tower" in San Francisco. The San
Francisco Coit Tower is a piece of public
art built in 1933 replacing a tower used
relative to shipping which was located on
the same site. This tower has no
relationship whatsoever with the services
for which the mark COIT TOWER is sought to
be registered by Appellant. Appellant's
services relate to hotel, gaming,
entertainment and restaurant services and in
no way constitute public art. The Coit
Tower does not in fact designate services
but rather a thing; Appellant's services in
no way depict the Coit Tower. As indicated
above, the use of the terms COIT TOWER for a
section of a casino, entertainment venue,
restaurant or bank of hotel rooms is merely
to evoke the theme of Appellant's facility.
Although ... COIT TOWER is not a "coined" or
fanciful mark, Appellant is still entitled

Smith & Mehaffey, 31 USPQ2d 1531, 1532 n. 3 (TTAB 1994); and In re
Melville Corp., 18 USPQ2d 1386, 1388 n. 2 (TTAB 1991). In any event,
even if such information were to be considered, given the indication
by applicant that the terms listed, in each instance, form only "part
of" rather than the actual marks which are the subjects of the third-
party registrations, and inasmuch as there is no way of knowing on
this record whether the registrations issued with or without either a
disclaimer of the particular term under Section 6(a) of the Trademark
Act, 15 U.S.C. §1056(a), or pursuant to a claim of acquired
distinctiveness in accordance with Section 2(f) of such Act, 15 U.S.C.
§1052(f), the information furnished by applicant is essentially of no
probative value. Furthermore, as applicant has correctly
acknowledged, each case must be determined on its own merits. See,
e.g., In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566
(Fed. Cir. 2001) ["Even if some prior registrations had some
characteristics similar to [applicant's] application, the PTO's
allowance of such prior registrations does not bind the Board or this
court"]; In re Broyhill Furniture Industries Inc., 60 USPQ2d 1511,
1514 (TTAB 2001); and In re Pennzoil Products Co., 20 USQP2d 1753,
1758 (TTAB 1991).

Ser. No. 75/899,518
6
to registration for its service mark used in
conjunction with the services listed above.

The San Francisco Coit Tower is not a
service and does not relate to the services
in question, nor are such services in any
way described by the term "Coit Tower."
.... "Coit Tower" is no more inherently
related to the services in question than the
mark XYZ would be. Coit Tower is not
[merely] descriptive of a casino complex
offering gambling, ... restaurants, ...
hotel services, entertainment services and
the like.

Finally, applicant urges that the term "COIT TOWER" is
an arbitrary mark when used in connection with its services.3
Applicant reiterates, in view thereof, that it "will not be
inhibiting competition for the aforementioned services by
receiving registration of the COIT TOWER mark." Applicant
argues, by analogy, that "just because an APPLE® computer has an
apple icon thereon or an apple theme does not make the APPLE®
mark descriptive of computers" and, thus, "[t]he owner of the
APPLE® mark is not inhibiting competition in the sale of
computers."

3 At first blush, it would appear contradictory for applicant to argue
that, while the term "COIT TOWER" is an "arbitrary" mark which "in no
way relate[s]" to its services, such term, as noted previously, "is
not a 'coined' or fanciful mark." It is assumed, however, that by the
latter applicant acknowledges that the name "Coit Tower" is an actual
location or area of San Francisco, instead of a contrived or
fictitious place, but that the use of such name in connection with its
services, admittedly so as "to evoke the theme of Appellant's
facility," somehow is nonetheless "arbitrary."

Ser. No. 75/899,518
7
The Examining Attorney, on the other hand, contends
that the term "COIT TOWER" merely "describes a feature and
significant characteristic of the applicant's services" because,
when "consumers encounter the proposed mark ... in connection
with the applicant's services, they will immediately know that
the theme of the premises is that of San Francisco's famous
landmark, the COIT TOWER." Applicant, the Examining Attorney
points out, "has stated that the proposed mark will be used in
connection with a section of its casino and that the use of the
term COIT TOWER is merely to evoke the theme of the applicant's
facility."
In particular, we note that in reply to three inquires
which, pursuant to Trademark Rule 2.61(b), were raised by the
Examining Attorney in her initial Office Action, applicant
responded as follows:
a. What is the theme of the places
where the services are rendered?

The services will be rendered in the
context of a hotel and casino facility
located in Las Vegas, Nevada. The theme of
such facility will be the City of San
Francisco. This is similar to hotel-casinos
in Las Vegas using the themes of the City of
New York (New York, New York), the City of
Paris (Paris) and similar city themes.
Accordingly, various areas within the casino
may be designated with the names of well
known San Francisco landmarks.

b. Are the services in any way
depicting the "COIT TOWER" in San Francisco?
Ser. No. 75/899,518
8

The services rendered herein in no way
relate to the "Coit Tower" in San Francisco.
.... ... Applicant's services in no way
depict the COIT TOWER. As indicated above,
the use of the term COIT TOWER for a section
of a casino, entertainment venue, restaurant
or bank of hotel rooms is merely to evoke
the theme of Applicant's facility.

c. What is the meaning of the mark
when used in connection with the services?

The mark COIT TOWER has no specific
meaning in relation to the services ....
Rather, its intent, as is discussed above,
is merely to evoke the theme of the facility
planned by Applicant.

Significantly, applicant also admitted in such response that
"the mark will be used for such items as an area of a gaming
facility, restaurant, bank of hotel rooms or entertainment venue
where the various entertainment services are presented." In
addition, with respect to "the services of a hotel casino and
its related gaming areas, restaurants, entertainment and hotel
rooms," applicant conceded in its initial response that "in Las
Vegas, Nevada ... there are significantly large numbers of other
facilities with the facility itself and parts thereof named for
or evoking other geographical items ...."
The Examining Attorney, in support of her position,
has made of record a number of excerpts from her search of the
"NEXIS" electronic database showing that "Coit Tower" is a well
known, if not famous, landmark in San Francisco. She also has
Ser. No. 75/899,518
9
made of record printouts from three website articles which
indicate that applicant, as well as two other developers, intend
to build San Francisco-themed hotel casino entertainment
complexes which will include replicating various landmarks
unique to or often associated with San Francisco, such as Coit
Tower, Lombard Street, Fisherman's Wharf, Alcatraz, the Golden
Gate Bridge and cable cars. One such article, which appears at
http://www.casinomagazine.com and is entitled "FREE SPEECH I
Lost My Shirt in San Francisco," reports in relevant part that:
Developers have plans to build three
more San Franciscos, and where else but in
Las Vegas, a city where anything worth doing
is worth overdoing, including another city.
Naturally, Las Vegas' multiple San
Francisco disorder has led to arguments and
rumblings of lawsuits about which developer
thought of copying San Francisco first.
In 1997, Las Vegas developer Mark
Advent, who conceived of the New York-New
York hotel-casino, announced his intention
to build a $500 million "San Francisco-
themed" casino on the strip.
By 1999, Advent's budget had grown to
$1 billion and the plan called for a replica
of the Bay with little boats sailing to an
Alcatraz replica in the middle, a miniature
Golden Gate Bridge and seven specialty
casinos reflecting themes of seven San
Francisco neighborhoods.
....
Last October San Francisco developer
Luke Brugnara said he'd like to build a
miniature City by the Bay by the desert,
too. ....
This week Kansas-based real estate man
Phil Ruffin announced plans to build yet
another way for rubes to leave their shirts
in San Francisco. He wants to build a $700
Ser. No. 75/899,518
10
million resort-casino called The City by the
Bay featuring miniature versions of many of
San Francisco's most famous tourist spots,
including Napa Valley.
....
Let a hundred San Franciscos bloom in
the desert, alongside other Las Vegas-class
versions of world-class cities like New
York, Paris and Venice. ....
But imitators shouldn't get huffy and
claim to be the innovators who came up with
the idea of a copy - unless their last name
is Xerox.
Advent and Ruffin are acting like they
invented the concept of a miniature San
Francisco ....
"We have our own design," Ruffin was
quoted as saying. "We didn't copy their
stuff."
....
If there must be three different San
Franciscos in Las Vegas, let them be three
really different San Franciscos, like we
have here. ....
Who wants to go to Vegas and see three
fake Coit Towers, three fake North Beaches
and three fake Chinatowns. ....
One San Francisco casino could
represent the standard tourist San
Francisco, with little bridges, cable cars
and a tackier version of Fisherman's Wharf.
Another could represent the hip, high-
tech San Francisco, with laptop slot
machines in coffeehouses, restaurants with
fusion buffets and blackjack dealers in
black clothing and retro shoes.
Yet another could be the risqué San
Francisco, with a miniature O'Farrell
Theater, a small and safe Tenderloin and a
cloned Castro.
This is the age of niche marketing, so
why don't these hotshot developers think of
things like this?
No, it's always the same old Alcatraz
and Golden Gate Bridge. And then they say
they came up with the idea.
Ser. No. 75/899,518
11
Lately Las Vegas has become one-stop
shopping for world travel, a city of city
imitations. ....

Another article, retrieved from
26/http://home.att.net, sets forth a history of the Frontier
hotel (also known as the New Frontier) in Las Vegas and states,
with respect to applicant's president, Phil Ruffin, and his
plans for such hotel and its site, that:
In October, 1997, Wichita businessman
Phil Ruffin purchased the Frontier for $167
million .... ....
....
On January 5, 2000, it was announced
that the second lady of the Strip was to
close her doors forever. Ruffin announced
that he is going to implode the Frontier and
build a replica of San Francisco, California
- a casino named City By The Bay which
would've been completed in September, 2002,
containing 2,500 rooms at a cost of $700
million. .... Plans for the new resort
include replicas of Chinatown, the Coit
Tower and Lombard Street. There will be a
walk-through Chinese pagoda, on to the
Golden Gate Bridge which will then go to
Fisherman's Wharf with boats in the water.
There will also be the Alcatraz Restaurant
and a Napa Valley winery.
....
Mark Advent of Advent Communications
and Entertainment who created the concept
for New York-New York took legal action
against Ruffin. Advent stated that he has
been working with Ruffin for the past two
years to create a San Francisco-themed
megaresort, and copyrighted detailed plans,
designs, concepts and other proprietary
information with Ruffin .... Ruffin
dismissed Advent's complaint stating "city
themes are in the public domain."

Ser. No. 75/899,518
12
The third article, also retrieved from the website
26/http://home.att.net, details plans by applicant's president
concerning the "City By The Bay" project:
Phil Ruffin is planning to build the
City by the Bay Casino and Resort on the
25.5 acres where The New Frontier now sits.
The City By The Bay will feature the
renowned Fisherman's Wharf where visitors
will be able to step out of the desert and
into the legendary Bay area in which a
carnivalesque mood will set the scene. A
myriad of indoor and open-air seafood
eateries will be available to satisfy every
level of appetite .... Visitors will enjoy
the atmosphere, and the aromas, of this ...
fun-filled scenic setting for dining and
shopping complete with curio shops and
street performers. This spectacular
attraction will include a pod of sea lions,
Monterrey [sic] boats and a wave making
machine to supply the sounds of the bay.
Although Fisherman's Wharf will be the
main attraction at The City By The Bay, it
doesn't stop there. The project will pay
tribute to many of the public domain icons
of San Francisco including:
Chinatown - .... Visitors will be able
to delve into a world of exotic shops and
markets, authentic restaurants and, at
times, an indigenous festival.
Lombard Street - A replica of "the
crookedest street in the world[,]" you will
be able to stroll your way up to the Coit
Tower while enjoying the profusely
landscaped grounds.
Coit Tower - This fluted concrete shaft
will rise approximately 300 feet from street
level at the top of Lombard Street. ....
Alcatraz - The infamous "Rock" will be
the setting for a unique dining experience.
.... Patrons may find themselves dining in
"Cell Block A" on tin plates.
Napa Valley - A fully operational
winery featuring a selection of California's
Ser. No. 75/899,518
13
finest wines. Napa Valley will also offer
gourmet dining and fine wines for tasting
and purchase.
The hotel will offer 2,512 guest rooms
.... Convention and meeting space will
cover 100,000 square feet of meeting and
pre-function rooms. The casino area will
encompass 100,000 square feet .... The
Golden Gate Bridge will serve as a stately
backdrop as it transports you from the strip
throughout the property.
The bay area known for it [sic]
delectable dining and nightlife will be
transformed to The City By the Bay with 10
specialty restaurants in addition to the 4
to 5 seafood options featured at Fisherman's
Wharf. The tone of sweet seduction and
romantic melodies will come alive with the
musical style of Otis Redding and Al Green
in the properties [sic] lounges and
nightclub. The property will also house a
1,200 seat showroom featuring its own in-
house production. Ruffin is looking at
several propositions but has not committed
to a specific production at this time. He
is looking for the "perfect" high energy,
musical and art form that will portray the
infamous nightlife the bay area is known
for.
The project includes a ... retail area
plus the specialty shops located in the
Fisherman's Wharf and Chinatown. In
addition, a short stroll over the Oakland
Bridge and guests will find themselves in
The Fashion Show Mall which houses
approximately 145 outlets and focuses on
high-end retail.

The Examining Attorney, based upon the evidence of
record and the Board's decision in In re Busch Entertainment
Corp., 60 USPQ2d 1130, 1133-34 (TTAB 2000), in which the term
"EGYPT" was held merely descriptive of a significant feature,
namely, "the Egyptian theme or motif," of the amusement park
Ser. No. 75/899,518
14
services involved therein, accordingly reasons that, as
previously noted, the term "COIT TOWER" is merely descriptive of
applicant's services because:
In In re Busch the Board agreed ...
that [the record established that] it is
customary for ... amusement parks ... to
feature diverse names of places and then
have those premises feature the [named place
as the] pertinent theme. The Board noted
that[,] therefore, the marks in question
would serve as nothing more than information
with respect to one of the salient features
of the [services rendered under each] mark,
namely, the theme.

Similarly, in the present case, the
mark in question does nothing more than to
inform ... consumers about one of the
features of the services, namely, that the
theme in question is that of the famous San
Francisco landmark, namely, the COIT TOWER.
Therefore, the mark is clearly merely
descriptive of one of the features of the
[services rendered under the] mark and the
refusal ... is warranted and should be
upheld by the Board.

The Board, on the basis of a substantially identical
record, recently held in a companion case involving applicant's
attempt to register the term "FISHERMAN"S WHARF" for the same
services as those herein, that such term was merely descriptive
of the theme of applicant's services. Among other things, the
Board in its decision in In re Ruffin Gaming, LLC, ___ USPQ2d
___ (TTAB 2002), indicated that (footnotes omitted):4

4 As in the above-cited case, we judicially notice that The Random
House Dictionary of the English Language (2d ed. 1987) at 1966 defines
Ser. No. 75/899,518
15
As a general proposition, we note that
a term which otherwise would be considered
an arbitrary, fanciful or suggestive mark,
when used in connection with goods or
services to identify and distinguish the
source thereof, does not lose such
characterization or status, and become
merely descriptive of the goods or services,
simply because the term could literally
designate a theme of the goods or services,
e.g., the trade dress of a product or the
décor of an entertainment facility, when so
used. That is, just because such a term
could thematically describe a trade dress or
décor, that does not make the term merely
descriptive if the trade dress or décor is
arbitrary, fanciful or suggestive, but if
the trade dress or décor is descriptive,
then a term which describes such thematic
manner of use is merely descriptive. See,
e.g., Stork Restaurant, Inc. v. Sahati, 166
F.2d 348, 76 USPQ 374, 379 (9th Cir. 1948)
["THE STORK CLUB" for café and nightclub
services "might well be described as 'odd',
'fanciful', 'strange', and 'truly
arbitrary'" but "[i]t is in no way
descriptive of the appellant's night club,
for in its primary significance it would
denote a club for storks," "[n]or is it
likely that the sophisticates who are its
most publicized customers are particularly
interested in the stork"]; Taj Mahal
Enterprises Ltd. v. Trump, 745 F. Supp. 240,
16 USPQ2d 1577, 1582 (D.N.J. 1990) ["TAJ
MAHAL is clearly suggestive in the food
service, casino and guest accommodations
markets because it takes some imagination to
link those services with the name of a

"theme" in pertinent part as "2. A unifying or dominant idea, motif,
etc., as in a work of art." It is settled that the Board may properly
take judicial notice of dictionary definitions. See, e.g., Hancock v.
American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330,
332 (CCPA 1953); University of Notre Dame du Lac v. J. C. Gourmet Food
Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983); and Marcal Paper Mills, Inc. v.
American Can Co., 212 USPQ 852, 860 n. 7 (TTAB 1981).

Ser. No. 75/899,518
16
palatial crypt located in India"]; Trump v.
Caesars World, Inc., 645 F. Supp. 1015, 230
USPQ 594, 599 and 595 (D.N.J. 1986), aff'd
in op. not for pub., 2 USPQ2d 1806 (3d Cir.
1987) ["CAESARS PALACE" and "PALACE" are
"fanciful, nongeneric names when used in
conjunction with casino hotels" which are
"informed by a so-called 'Greco-Roman'
theme"]; Caesars World, Inc. v. Caesar's
Palace, Inc., 179 USPQ 14, 16 (D. Neb. 1973)
["CAESARS PALACE" is "arbitrary, unique and
nondescriptive" when used in connection with
hotel and convention center services]; and
Real Property Management, Inc. v. Marina Bay
Hotel, 221 USPQ 1187, 1190 (TTAB 1984) ["It
seems obvious that 'MARINA,' whatever
descriptive significance it may have in
relation to other services or goods, would
not per se operate to describe hotel and
restaurant facilities, even those located on
bodies of water"].

Each of the foregoing cases, of course,
was determined on its own facts and, in
particular, the significance which each of
the subject marks had to the relevant public
encountering the terms at issue in
connection with the respective services.
This appeal, however, is most analogous to
the Busch case cited by the Examining
Attorney and from which, for present
purposes, the proposition may be extracted
that, where the record reveals that it is
the intent of an applicant and a practice or
trend in the trade or industry to replicate
or otherwise simulate the ambiance or
experience of a place (in whole or
meaningful part), then a term which names
the place, when used as a theme of the goods
or services, is generally considered to be
merely descriptive of a significant feature
or characteristic of the goods or services.
See In re Busch Entertainment Corp., supra
[in view of evidence demonstrating a trend
in theme park industry of recreating the
culture or history of foreign lands and
showing that "EGYPT" is the name of the
Ser. No. 75/899,518
17
ninth land in the applicant's African-themed
amusement park, "EGYPT" found merely
descriptive of amusement park services
inasmuch as term indicates subject matter or
country being imitated, at least in part,
and would be so recognized by consumers; as
such, term identifies only an Egyptian theme
or motif rather than the source or origin of
the services].

(Slip op. at 12-15.)
Applying the above test, we find that, although
presently still an intent-to-use application, applicant has
admitted, and the evidence clearly supports, the fact that
applicant's services are intended to be rendered in the context
of a San Francisco-themed resort and that such facility will
include a distinct area designated as "COIT TOWER," which will
be built and decorated to evoke the ambiance or experience of
the Coit Tower landmark in such city. Moreover, while Coit
Tower is obviously not a country like Egypt, the record plainly
demonstrates that it is a well known--if not famous--place, with
readily identifiable features or characteristics, within San
Francisco and, as a popular tourist attraction, plainly is not a
place devoid of commercial activity. Furthermore, the record
establishes that it is a practice or trend among hotel casino
entertainment facilities to replicate or otherwise simulate the
ambiance or experience of various geographical places, such as
the cities of New York, Paris and Venice.
Ser. No. 75/899,518
18
We therefore agree with the Examining Attorney that,
as in Ruffin Gaming, supra, the record in this case sufficiently
establishes that customers for applicant's entertainment
services, consisting of live performances by a musical band,
amusement arcades, casino services, theatrical performances,
vaudevilles and comedy performances, and its various hotel
services, restaurant services, nightclub services, café services
and the providing of convention facilities would immediately
understand, without speculation or conjecture, that the term
"COIT TOWER" merely describes a significant characteristic or
feature thereof, namely, the theme or décor used in the
rendering of the services. Collectively, as applicant has
admitted, such services are all part of applicant's planned
hotel casino entertainment complex which, as two of the website
articles plainly evidence, will replicate as a substantial
portion of its San Francisco-themed facility the ambiance or
experience of the Coit Tower locality of that city. Coit Tower,
as the "NEXIS" excerpts show, is a well known--if not famous--
San Francisco landmark which, like such others as Fisherman's
Wharf, Lombard Street, cable cars and the Golden Gate Bridge,
serves as a readily, if not instantly, recognizable icon for the
city itself. Consequently, while we appreciate applicant's
contention that its services "in no way relate to the 'Coit
Tower' in San Francisco" because such services "in no way
Ser. No. 75/899,518
19
constitute public art," we find significant applicant's
admission that the use of the term "COIT TOWER" in connection
with its services "is merely to evoke the theme of the facility
planned by Applicant." Just as the term "EGYPT" is evocative of
the theme or motif of the Egyptian section of the African-themed
amusement park services in Busch, so too will the term "COIT
TOWER" be evocative of a San Francisco landmark which serves as
a theme or motif for the services applicant intends to render.
Moreover, as similarly was the case in Busch with
respect to third-party uses for amusement park services of the
names of other foreign lands, the record herein not only
contains evidence that applicant intends to imitate the Coit
Tower landmark in connection with the services to be offered at
its San Francisco-themed hotel casino entertainment facility,
but that city imitations are commonplace in the field for
services of the kinds applicant plans to provide. Applicant
admits, as indicated earlier, that its services will be rendered
in the context of a hotel casino entertainment complex to be
located in Las Vegas, Nevada, with the theme of such facility
being the City of San Francisco" and that, "[a]ccordingly,
various areas within the casino may be designated with the names
of well known San Francisco landmarks."
In particular, applicant concedes with respect to the
term "COIT TOWER" that "the mark will be used for such items as
Ser. No. 75/899,518
20
an area of a gaming facility, restaurant, bank of hotel rooms or
entertainment venue where the various entertainment services are
presented." Applicant further admits, as noted previously, that
"[t]his is similar to hotel-casinos in Las Vegas using the
themes of the City of New York (New York, New York), the City of
Paris (Paris) and similar city themes." In fact, it is such a
common business practice to name hotel casinos and parts thereof
after various geographical terms which relate to the theme of
"the services of a hotel casino and its related gaming areas,
restaurants, entertainment and hotel rooms" that, as applicant
concedes, "in Las Vegas, Nevada ... there are significantly
large numbers of other facilities with the facility itself and
parts thereof named for or evoking other geographical items
...." Clearly, on this record, there is no doubt that the theme
or décor utilized in rendering services of the kinds typically
provided by a hotel casino entertainment complex, such as those
applicant intends to offer under the term "COIT TOWER," is a
significant characteristic or feature thereof in that it
accounts in large measure for the appeal of the facility's
services to the consuming public.
Accordingly, far from its being, as applicant asserts,
"an anomaly for people in the industry to use COIT TOWER to
describe the aforementioned services," we concur with the
Examining Attorney that, as argued in her brief, "[c]ompetitors
Ser. No. 75/899,518
21
may very well want to use the COIT TOWER theme in connection
with their services and they will be disadvantaged if the
applicant is given exclusive right of ownership in the mark in
question." Indeed, the record shows that two other competitors
of applicant have contemplated building hotel casino
entertainment facilities which will feature a San Francisco
theme. If they or any other competitor should choose to
include, as part of such a facility, a replica of Coit Tower,
they plainly should be entitled to refer to or otherwise
describe that section by the term "COIT TOWER," since that term-
-being the proper noun or name by which that renowned
geographical location and landmark of San Francisco is known--is
obviously the most evocative or immediately informative
designation therefor. As the Examining Attorney, for instance,
further notes in her brief, use of "the term COIT TOWER for
casinos decorated to look like San Francisco's COIT TOWER
landmark, clearly does just that." See In re Gyulay, supra at
1010 ["APPLE PIE" merely describes scent of potpourri which
simulates aroma of apple pie].
Thus, just as the designation "EGYPT" merely describes
the theme or motif of the services offered in the section of an
African-themed amusement park devoted in significant part to
ancient Egyptian civilization, customers and prospective
consumers for applicant's various San Francisco-themed services
Ser. No. 75/899,518
22
similarly would understand and expect, upon encountering the
term "COIT TOWER" used in connection therewith, that such term
merely describes the décor or theme, in the sense of the
ambiance or experience of the city area or landmark being
simulated, rather than the source or origin of the services.
Applicant concedes, in fact, that "the use of the term COIT
TOWER for a section of a casino, entertainment venue, restaurant
or bank of hotel rooms is merely to evoke the theme of
Applicant's facility." Plainly, when viewed in the context of
the services which applicant's hotel casino entertainment
facility will provide, there is nothing about the term "COIT
TOWER" which is ambiguous, incongruous or susceptible, perhaps,
to any plausible meaning other than immediately conveying
information as to the theme of such services. Nothing requires
the exercise of imagination, cogitation or mental processing or
the gathering of further information in order for customers and
potential consumers of applicant's services to readily perceive
that, as is a common business practice in the industry, the term
"COIT TOWER" names the particular theme of such services.
It is well established that, with respect to issues of
descriptiveness, the placement or categorization of a term along
the continuum of distinctiveness that ranges from arbitrary or
fanciful to suggestive to merely descriptive to generic is a
question of fact. See, e.g., In re Merrill Lynch, Pierce,
Ser. No. 75/899,518
23
Fenner & Smith, Inc., 828 F.2d 1567, 4 USPQ2d 1141, 1143 (Fed.
Cir. 1987). It is clear on this record that, unlike applicant's
example of the mark "APPLE" for computers which bear an apple
icon (as opposed to those in the shape of an apple), the term
"COIT TOWER" can scarcely be considered arbitrary or fanciful,
or even just suggestive, when used in connection with the
services which applicant's hotel casino entertainment complex
will render to consumers in a facility designed to replicate or
imitate the renowned Coit Tower landmark of San Francisco.5
Rather, as applicant's president reportedly stated, "city themes
are in the public domain," and the purchasing public, which
continues to watch the proliferation of such themes for hotel
casino entertainment complexes, would readily and unequivocally

5 We are mindful, in so noting, that care is obviously required in
extending the spectrum of categories of words as marks into the realm
of shapes and images which words can describe or suggest. As
Professor McCarthy has cautioned (emphasis added):

A few courts have tried to apply to trade dress the
traditional spectrum of marks categories which were created
for word marks .... That is, these courts have tried to
apply such categories as "arbitrary," "suggestive," and
"descriptive" to shapes and images. Only in some cases
does such a classification make sense. For example, a
tomato juice container in the shape of a tomato might be
classified as "descriptive" of the goods. While a commonly
used, standard sized can used as a tomato juice container
is not "descriptive" of the goods, it is hardly inherently
distinctive. The word spectrum of marks simply does not
translate into the world of shapes and images.

1 J. McCarthy, McCarthy on Trademarks & Unfair Competition §8:13 (4th
ed. 2002).
Ser. No. 75/899,518
24
perceive the term "COIT TOWER" as designating the theme or motif
of applicant's services instead of their source or origin.
Accordingly, because the term "COIT TOWER" conveys
forthwith significant information concerning a feature or
characteristic of applicant's entertainment services, namely,
live performances by a musical band, amusement arcades, casino
services, theatrical performances, vaudevilles and comedy
performances and its various hotel services, restaurant
services, nightclub services, café services and providing of
convention facilities, it is merely descriptive thereof within
the meaning of the statute. See In re Ruffin Gaming, LLC,
supra, and In re Busch Entertainment Corp., supra at 1134.
Decision: The refusal under Section 2(e)(1) is
affirmed.