Station Casinos, Inc.

Trademark Trial and Appeal Board

Apr 16, 2009

No. 77146847 (T.T.A.B. Apr. 16, 2009)

Mailed:
April 16, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Station Casinos, Inc.
________

Serial No. 77146847
_______

Jason D. Firth of Brownstein Hyatt Farber Schreck LLP for
Station Casinos, Inc.

Edward Nelson, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Quinn, Hairston and Grendel, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

Applicant seeks registration on the Principal Register
of the mark BONUS HARDWAYS (in standard character form) for
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 77146847
2
“casino services.”1 Applicant has disclaimed the exclusive
right to use HARDWAYS apart from the mark as shown.2
The Trademark Examining Attorney has issued a final
refusal of registration on the ground that applicant’s
mark, when considered in connection with the recited
services, is merely descriptive and thus unregistrable
under Trademark Act Section 2(e)(1), 15 U.S.C. §1052(e)(1).
Applicant has appealed the final refusal. After
careful consideration of the evidence, and for the reasons
discussed below, we affirm the refusal to register.
A term is deemed to be merely descriptive of goods or
services, within the meaning of Trademark Act Section
2(e)(1), if it forthwith conveys an immediate idea of an
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). A term need not immediately convey an
idea of each and every specific feature of the applicant’s
goods or services in order to be considered merely

1 Serial No. 77146847, filed on April 2, 2007. The application
is based on applicant’s asserted bona fide intention to use the
mark in commerce. Trademark Act Section 1(b), 15 U.S.C.
§1051(b).

2 See Trademark Act Section 6, 15 U.S.C. §1056.

Ser. No. 77146847
3
descriptive; it is enough that the term describes one
significant attribute, function or property of the goods or
services. See In re H.U.D.D.L.E., 216 USPQ 358 (TTAB
1982); In re MBAssociates, 180 USPQ 338 (TTAB 1973).
Whether a term is merely descriptive is determined not
in the 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. That a term may have
other meanings in different contexts is not controlling.
In re Bright-Crest, Ltd., 204 USPQ 591, 593 (TTAB 1979).
Moreover, it is settled that “[t]he question is not whether
someone presented with only the mark could guess what the
goods or services are. Rather, the question 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 USPQ2d 1314, 1316-17 (TTAB 2002).
See also In re Patent & Trademark Services Inc., 49 USPQ2d
1537 (TTAB 1998); In re Home Builders Association of
Greenville, 18 USPQ2d 1313 (TTAB 1990); and In re American
Greetings Corporation, 226 USPQ 365 (TTAB 1985).
Ser. No. 77146847
4
On the other hand, a mark is suggestive if, when
the goods or services are encountered under the
mark, a multistage reasoning process, or the
utilization of imagination, thought or
perception, is required in order to determine
what attributes of the goods or services the mark
indicates.

In re On Technology Corp., 41 USPQ2d 1475, 1477 (TTAB 1996)
(internal citations omitted). “As has often been stated,
there is a thin line of demarcation between a suggestive
mark and a merely descriptive one, with the determination
of which category a mark falls into frequently being a
difficult matter involving a good measure of subjective
judgment.” Id. The burden initially is on the Office to
make a prima facie showing that the mark is merely
descriptive. Where doubt exists as to whether the mark is
merely descriptive, such doubt is to be resolved in
applicant’s favor. In re Box Solutions Corp., 79 USPQ2d
1954, 1955 (TTAB 2006).
Applying these principles in the present case, we find
that the Trademark Examining Attorney has presented
evidence sufficient to establish, prima facie, that BONUS
HARDWAYS is merely descriptive of the services recited in
the application, i.e., “casino services.” We also find
that the third-party registration evidence submitted by
applicant does not suffice to rebut that prima facie
showing of mere descriptiveness.
Ser. No. 77146847
5
First, we find that the word BONUS is merely
descriptive of applicant’s recited “casino services.” The
record includes the following pertinent dictionary
definition of “bonus”: “Something given or paid in
addition to what is usual or expected.” The American
Heritage Dictionary of the English Language (4th ed. 2000).
(March 24, 2008 Denial of Request for Reconsideration.)
Under this definition and in the context of casino
services, the word “bonus” in the mark would immediately
inform casino patrons that they are or could be entitled to
something in addition to the usual or expected reward or
return that they already would receive for patronizing
and/or gambling at the casino.
We rely primarily on this dictionary definition as the
basis for our finding that BONUS is merely descriptive as
applied to “casino services.” We note as well, however,
that the Trademark Examining Attorney has submitted
evidence (March 24, 2008 Denial of Request for
Reconsideration) of seven third-party registrations for
casino services in which the word BONUS appears.3 In each

3 These registrations are:
1. THE SLOT BONUS CAPITAL (SLOT BONUS disclaimed) for
“casino services.” (Reg. No. 2499888);
2. LET IT RIDE BONUS 12$ 10 J Q K A (and design)(BONUS
disclaimed) for “entertainment services, namely, conducting games
of chance on casino premises.” (Reg. No. 2558783);
Ser. No. 77146847
6
case, the word BONUS has been disclaimed or the mark is
registered on the Supplemental Register.
We note as well the Trademark Examining Attorney’s
Internet evidence (March 24, 2008 Denial of Request for
Reconsideration) suggests that the term “bonus” is commonly
used in a descriptive manner in connection with online
casino gambling services, which might reasonably be assumed
to be patronized by the same gamblers who also would
patronize actual casinos. For example:
1. From the website www.casinobonus.net:
“Casino Bonus.net is the number one guide to the
best online casino bonuses. Our database has
hundreds of special bonuses to help you maximize
your earnings at online casinos.”

2. From the website
www.casinobonusstreak.com: “We have daily updated
promos, free chips, casino bonus and contests you
can enter to win free cash.” “Welcome Bonus!!
…we’re offering all new players a fantastic 100%

3. TRIPLE SHOT BONUS (BONUS disclaimed) for “entertainment
services, namely, providing live casino games in gaming
establishments.” (Reg. No. 2718954);
4. BOUNCE BACK BONUS! (BONUS disclaimed) for “casino
services.” (Reg. No. 2746828);
5. TEXAS HOLD ‘EM BONUS (Supplemental Register; TEXAS HOLD
‘EM disclaimed) for “casino gaming services, namely, providing
card games.” (Reg. No. 3152309);
6. BONUS REWARDS (Supplemental Register; no disclaimers)
for “casinos; entertainment gaming services, namely, conducting
games of chance in casinos which are subject to promotions in the
nature of frequent player incentive programs; frequent player
incentive programs, namely, reward programs featuring additional
plays at slot machines at associated venues.” (Reg. No.
3387073); and
7. POWER PRIZE JACKPOT AND PLAYERS CARD BONUS and design
(PRIZE, JACKPOT, and PLAYERS CARD BONUS disclaimed) for “casino
services”. (Reg. No. 3257953.)
Ser. No. 77146847
7
welcome bonus!” “New Players Receive $500 in
Bonus Money.”

3. From the website www.all-casino-
bonuses.com: “We are searching the web every day,
looking for new casino bonuses and promotions,
special bonus codes and casino coupons.”

Based on this evidence, and primarily on the
dictionary definition of the word itself, we find that
casino patrons would immediately perceive and understand
what BONUS means in the context of casino services, i.e.,
that one may earn or receive a bonus for patronizing and/or
gambling at the casino.
Next, we find that the word HARDWAYS, a term of art in
the casino gambling game of craps, likewise is merely
descriptive of applicant’s recited “casino services.”
Initially, we take judicial notice that “craps” is “A
gambling game played with two dice in which a first throw
of 7 or 11 wins, a first throw of 2, 3 or 12 loses the bet,
and a first throw of any other number (a point) must be
repeated to win before a 7 is thrown, which loses both the
bet and the dice.” The American Heritage® Dictionary of
the English Language (4th ed. 2000).4 Craps is a typical
casino gambling game; applicant has acknowledged that it

4 The Board may take judicial notice of dictionary definitions.
See University of Notre Dame du Lac v. J.C. Gourmet Food Imports
Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Ser. No. 77146847
8
offers the game of craps to its casino patrons.
(Applicant’s brief at 9.)
The Trademark Examining Attorney has made of record an
excerpt from the website “RULES TO WIN”
(www.rulestowin.com/en/casino/craps) which discusses the
game of craps in more detail, including the following
discussion of the significance of the term “hardways”:
There are numerous betting options, any number of
which can be made during the same roll. ...
[One of these specific betting options is]
HARDWAYS – When a pair (matching dice) is used to
make a number it’s called the “hard way,” because
there is only one way to make them. i.e. Two 2’s
are “Hard 4.” Both 1 and 3, or 3 and 1, are
“Soft 4.” A Hardways bet is a bet that the hard
number will come up before a 7 or the soft
number. Hardways numbers are 4, 6, 8, and 10.

Based on this evidence, we find that HARDWAYS is a
term of art in the casino game of craps, a game which
applicant offers to its casino patrons as a feature of its
“casino services.” We find that casino patrons, who
include craps players, would immediately perceive and
understand what HARDWAYS signifies in the context of craps
and “casino services,” and that HARDWAYS therefore is
merely descriptive of such services. Indeed, applicant has
disclaimed the exclusive right to use HARDWAYS apart from
the mark as shown.
Ser. No. 77146847
9
Notwithstanding its disclaimer of HARDWAYS, applicant
has argued in its brief that HARDWAYS is not merely
descriptive of applicant’s “casino services.” First,
applicant argues that HARDWAYS is not merely descriptive of
applicant’s casino services because “hardways” or “hard
way” “has other meanings outside the game of craps that
consumers may also recognize,” and “other meanings outside
of casino parlance that may also resonate with the
consuming public.” (Applicant’s brief at 7.) However, as
noted above, mere descriptiveness must be determined as
applied to the recited services, not in the abstract, and
the fact that a term may have other meanings in different
contexts is not determinative. In re Bright-Crest, Ltd.,
supra.
Applicant also argues that because craps is a less
popular casino game than other games such as slots and
blackjack, not all casino patrons will know the meaning of
“hardways.” “Because the term ‘hardways’ is not easily
recognizable to everybody for whom Station’s casino
services are geared, the meaning of the Mark is not easily
discernable to the relevant consumer base” and it therefore
is not merely descriptive. (Applicant’s brief at 5.)
Applicant cites no authority for the proposition that a
term is merely descriptive only if “everybody” in the
Ser. No. 77146847
10
relevant consumer base recognizes its descriptive
significance. The relevant purchasers of applicant’s
casino services obviously include craps players, who will
immediately recognize the descriptive significance of the
term HARDWAYS as used in the context of “casino services.”
No more is required to establish the mere descriptiveness
of the term.
Applicant also argues that HARDWAYS is not merely
descriptive because applicant’s “casino services” are
broadly recited and are not limited to the game of craps,
and HARDWAYS has no descriptive significance as applied to
these other aspects of applicant’s “casino services.” As
noted above, however, a term need not immediately convey an
idea of each and every specific feature of the applicant’s
services in order to be considered merely descriptive; it
is enough that the term describes one significant
attribute, function or property of the services. See In re
H.U.D.D.L.E., supra; In re MBAssociates, supra. We find
that applicant’s offering of the game of craps to its
casino patrons is a significant feature of applicant’s
“casino services.” Because HARDWAYS is merely descriptive
of this feature of applicant’s “casino services,” it is
merely descriptive of the “casino services” generally, for
purposes of Section 2(e)(1).
Ser. No. 77146847
11
Having found that the word BONUS and the disclaimed
term HARDWAYS, considered separately, are merely
descriptive of applicant’s services, we next find, more
importantly, that the composite BONUS HARDWAYS likewise is
merely descriptive of the services. Applicant’s
combination of these two descriptive terms does not result
in a composite which is not also merely descriptive.
As used in connection with casino services, BONUS
HARDWAYS immediately and directly informs relevant
purchasers (casino patrons in general and craps players in
particular) that they will earn or receive a “bonus” if
they bet and win on a “hardways” roll in the game of craps.
Applicant argues that BONUS HARDWAYS is not merely
descriptive because it does not directly identify the
particular nature of the bonus to be earned by winning a
hardways bet at craps.
While Bonus is to be used in accordance with its
normal dictionary definition, customers can
receive their “bonus” in any number of forms,
such as a complimentary meal, cash, extra chips,
drinks, show tickets, merchandise, etc. In other
words, the Mark suggests to consumers that there
may be a benefit to rolling dice that land on
certain numbers. It is unknown from the Mark,
however, what that actual benefit may be. The
“Bonus,” therefore, and what that entails, is
unclear from the Mark, which requires the
consumer to make a connection between the Mark
and the Services. The Mark requires thought and
perception to reach a conclusion as to the nature
of the services. Consumers who simply hear or
Ser. No. 77146847
12
see the mark will not immediately know how or
what benefits may be received upon entrance to
the Station casino and participating in the games
offered therein.

(Applicant’s brief at 4-5.)
We are not persuaded by this argument. BONUS HARDWAYS
immediately and unambiguously informs casino patrons,
including craps players, that if they roll hardways at
craps, they will receive a bonus of some sort. Regardless
of whether the bonus might consist of “a complimentary
meal, cash, extra chips, drinks, show tickets, merchandise,
etc.,” it is still, at bottom and by definition, a bonus
for rolling hardways at craps. It is not necessary that
casino patrons be able to tell or guess solely from the
mark itself what the specific bonus might be. As noted
above, “[t]he question is not whether someone presented
with only the mark could guess what the goods or services
are. Rather, the question 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.,
supra, 64 USPQ2d at 1316-17.
We find that casino patrons, especially including
craps players, upon encountering the term BONUS HARDWAYS in
connection with casino services, will immediately know what
it signifies, i.e., that there is some sort of a bonus for
Ser. No. 77146847
13
rolling hardways at craps. BONUS HARDWAYS would have no
other meaning to these purchasers.
Applicant’s evidence in opposition to the mere
descriptiveness refusal consists of TESS printouts of
thirty-three third-party Principal Register registrations,
covering various gambling or gaming goods and services, of
marks which include the term BONUS but in which BONUS has
not been disclaimed nor registered on the basis of a claim
of acquired distinctiveness. (March 1, 2008 Request for
Reconsideration).5

5 These registrations are summarized as follows:
1. BONUS BINGO (BINGO disclaimed) for “game cards and game
tickets for playing game of chance.”
2. GOLD BONUS (no disclaimers) for “game cards and game
tickets for playing games of chance.”
3. BONUS BOARD (BOARD disclaimed) for “gaming tickets.”
4. BONUS JOB JAR (JOB JAR disclaimed) for “multiplayer board
game.”
5. BONUS LINE (no disclaimers) for “printed game cards.”
6. SUPER GOLD BONUS (no disclaimers) for “game cards and
tickets for playing games of chance.”
7. “GREAT HANDS” $10,000 HOLD ‘EM BONUS CHALLENGE ($10,000 and
HOLD ‘EM disclaimed) for “casino services.”
8. BONUS MAGIC (no disclaimers) for “casino services where
points are accumulated by frequent players and exchanged for club
benefits.”
9. BONUS TIMES PAY (PAY disclaimed) for “gaming machines,
namely, slot machines or lottery terminals.”
10. FLUSH BONUS POKER (POKER disclaimed) for “casino and
lottery gaming equipment.”
11. BOXCAR BONUS (no disclaimers) for “slot machines.”
12. BONUS BUCKS BINGO (BINGO disclaimed) for “gaming
machines.”
13. DOUBLE HAND BONUS BLACKJACK (BLACKJACK disclaimed) for
“gaming tables used in a casino.”
14. BONUS BLACKJACK (BLACKJACK disclaimed) for “video
blackjack gaming machines and gaming software.”
Ser. No. 77146847
14
Applicant argues that these third-party registrations
show that BONUS is not merely descriptive, that it has been
the Office’s practice in the past to deem the word BONUS to
be inherently distinctive and registrable in connection
with gambling-related goods or services, and that BONUS in
applicant’s mark therefore suffices to carry the mark for
purposes of registration on the Principal Register.
Applicant contends that the existence of these third-party

15. BIG BONUS SLOTS (SLOTS disclaimed), for “video game
machine.”
16. BERRY BONUS (no disclaimers) for “coin-operated video game
machines.”
17. FRUIT BONUS 2000 (no disclaimers) for “video game software
and hardware.”
18. SUPER FRUIT BONUS (no disclaimers) for “video game
software and hardware.”
19. BONUS STACKS (no disclaimers) for “video and slot machines
and table games used in a gambling establishment or online.”
20. BONUS BANK (no disclaimers) for “slot machines and video
slot machines.”
21. BOOMERANG BONUS (no disclaimers) for “slot machines and
video table games for gaming purposes.”
22. BLOOMING BONUS (no disclaimers) for “slot machines and
video table games for gaming purposes.”
23. CARIBBEAN STUD BONUS and design (STUD disclaimed) for
“casino gaming tables and casino card games.”
24. GAMBLERS BONUS (GAMBLERS disclaimed) for “slot machines.”
25. BONUS POWER (no disclaimers) for “gaming devices, namely,
gaming machines and software.”
26. 4 ALARM BONUS (no disclaimers) for “slot machines and
gaming machines.”
27. BONUS FRENZY (no disclaimers) for “slot machines.”
28. CLASSIC BONUS (no disclaimers) for “slot machines and
other casino and lottery gaming equipment.”
29. BONUS RUN (no disclaimers) for “slot machines.”
30. BONUS PARTY (no disclaimers) for “slot machines.”
31. THE 100 FOOT BONUS! (no disclaimers) for “casino and
lottery game equipment, namely slot machines and operational
software.”
32. BONUS SEVENS (SEVENS disclaimed) for “slot machines.”
33. BONUS 7S (7S disclaimed) for “slot machines.”
Ser. No. 77146847
15
registrations at least raises doubt as to whether
applicant’s mark BONUS HARDWAYS is merely descriptive of
applicant’s “casino services,” and that such doubt should
be resolved in applicant’s favor. We are not persuaded.
Six of the thirty-three registrations (Nos. 1-6 in
footnote 5 above) involve games and game equipment (such as
board games, game cards and tickets) which perhaps are not
even for use in the context of casino gambling, and they
therefore are of limited probative value to that extent.
The remaining twenty-seven registrations include only two
which cover casino services, per se (Nos. 7-8 above), and
twenty-five which cover goods, primarily gaming and slot
machines, which we shall assume are used in the context of
casino gambling (Nos. 9-33 above).
However, we note that many of the third-party marks
can be distinguished from applicant’s mark when it comes to
determining mere descriptiveness. As discussed above,
applicant’s mark considered as a whole has a definite,
specific meaning and commercial impression, i.e., that one
can earn a bonus by rolling hardways at craps. The
mechanism by which the bonus is effected is specifically
spelled out in applicant’s mark, i.e., the rolling of
hardways at craps, and the two words are closely tied
together. In contrast, many of the third-party marks
Ser. No. 77146847
16
submitted by applicant (such as GOLD BONUS, SUPER GOLD
BONUS, BONUS MAGIC, BONUS TIMES PAY, GAMBLERS BONUS, BONUS
POWER, BONUS FRENZY, CLASSIC BONUS, and BONUS PARTY) are
much less definite and focused in terms of the commercial
impressions they make, due to the vagueness of the word(s)
accompanying BONUS. As a result, the significance of the
word BONUS in these marks is less clear and more suggestive
and vaguely laudatory than it is in applicant’s mark, where
it is directly tied to the definite and descriptive term
HARDWAYS.
In short, we have considered the third-party
registrations submitted by applicant for whatever probative
value they may have. However, it is settled that we must
decide each case on its own record and on its own merits,
and that the existence of registrations of marks which may
be similar to applicant’s mark is not determinative. See,
e.g., In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001):

The record in this case contains many prior
registrations of marks including the term
ULTIMATE. These prior registrations do not
conclusively rebut the Board's finding that
ULTIMATE is descriptive in the context of this
mark. ... Even if some prior registrations had
some characteristics similar to Nett Designs’
application, the PTO's allowance of such prior
registrations does not bind the Board or this
court. Needless to say, this court encourages
Ser. No. 77146847
17
the PTO to achieve a uniform standard for
assessing registrability of marks. Nonetheless,
the Board (and this court in its limited review)
must assess each mark on the record of public
perception submitted with the application.
Accordingly, this court finds little persuasive
value in the registrations that Nett Designs
submitted to the examiner...

See also In re Hotels.com L.P., 87 USPQ2d 1100 (TTAB
2008)(third-party registrations not dispositive, and do not
establish that there is an Office practice holding that
similar such marks are generally registrable); In re The
Place Inc., 76 USPQ2d 1467 (TTAB 2005)(same); and In re
First Draft, Inc., 76 USPQ2d 1183 (TTAB 2005)(same).
After considering all of the evidence in the record
and all of the arguments of counsel, and for all of the
reasons discussed above, we find that applicant’s mark
BONUS HARDWAYS is merely descriptive of “casino services.”
The mark therefore is unregistrable pursuant to Trademark
Act Section 2(e)(1).

Decision: The refusal to register is affirmed.