Ruffin Gaming, LLC

Trademark Trial and Appeal Board

Aug 20, 2002

No. 75899614 (T.T.A.B. Aug. 20, 2002)

8/20/02 Paper No. 11
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ruffin Gaming, LLC
________

Serial No. 75/899,614
_______

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, Bucher and Drost, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Ruffin Gaming, LLC has filed an application to
register the term "FISHERMAN'S WHARF" 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
THIS DISPOSITION IS
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75/899,614
2
services, 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 "FISHERMAN'S WHARF" is merely descriptive of them.2
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

1 Ser. No. 75/809,046, filed on January 20, 2000, based upon an
allegation of a bona fide intention to use such term in commerce.

2 Although, initially, the Examining Attorney also refused registration
on the grounds that, when used in connection with applicant's
services, the term "FISHERMAN'S WHARF" is primarily geographically
descriptive thereof under Section 2(e)(2) of the Trademark Act, 15
U.S.C. §1052(e)(2), if applicant's services come from the Fisherman's
Wharf area of San Francisco, and is primarily geographically
deceptively misdescriptive thereof under Section 2(e)(3) of the
Ser. No. 75/899,614
3
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
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 FISHERMAN'S WHARF for a
casino complex operating ... games of chance, restaurants, ...

Trademark Act, 15 U.S.C. §1052(e)(3), if the services do not come from
such area, both refusals were subsequently withdrawn.
Ser. No. 75/899,614
4
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 not
being able to use FISHERMAN'S WHARF to
describe their casino complex .... The
Appellant will not be inhibiting competition
... if it received registration of the
FISHERMAN'S WHARF mark. It would be an
anomaly for people in the industry to use
FISHERMAN'S WHARF 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 "FISHERMAN'S WHARF" is merely
descriptive of applicant's services because such services are
likely to depict or feature the well known, if not famous,
Fisherman's Wharf area of 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."3 According to applicant:

3 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
Ser. No. 75/899,614
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 or are
descriptive of the "Fisherman's Wharf" in
San Francisco. The San Francisco
Fisherman's Wharf is not a service and does
not relate to the services in question, and
it is not in any way described by the terms
"Fisherman's Wharf." The San Francisco
Fisherman's Wharf is a section of that city
where fishing and sightseeing boats moor.
This has no relationship whatsoever with the
services for which the mark FISHERMAN'S

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
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. 75/899,614
6
WHARF is sought to be registered by
Appellant. Appellant's services relate to
hotel, gaming, entertainment and restaurant
services and in no way constitute a fishing
or mooring area. Fisherman's Wharf does not
in fact designate services but rather a
thing; Appellant's services in no way depict
the Fisherman's Wharf in San Francisco. As
indicated above, the use of the terms
FISHERMAN'S WHARF 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 ...
FISHERMAN'S WHARF is not a "coined" or
fanciful mark, Appellant is still entitled
to registration for its service mark used in
conjunction with the services listed above.
... Fisherman's Wharf is no more inherently
related to the services in question than the
mark XYZ would be. FISHERMAN'S WHARF is not
[merely] descriptive of a casino complex
offering gambling, ... restaurants, ...
hotel services, entertainment services and
the like.

Finally, applicant urges that the term "FISHERMAN'S
WHARF" is an arbitrary mark when used in connection with its
services.4 Applicant reiterates, in view thereof, that it "will
not be inhibiting competition for the aforementioned services by
receiving registration of the FISHERMAN'S WHARF mark."
Applicant argues, by analogy, that "just because an APPLE®
computer has an apple icon thereon or an apple theme does not

4 At first blush, it would appear contradictory for applicant to argue
that, while the term "FISHERMAN'S WHARF" 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 "Fisherman's Wharf" is
an actual location or section of San Francisco, instead of a contrived
or fictitious place, but that the use of such name in connection with
Ser. No. 75/899,614
7
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."
The Examining Attorney, on the other hand, contends
that the term "FISHERMAN'S WHARF" 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 FISHERMAN'S WHARF." 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 'FISHERMAN'S WHARF' 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

its services, admittedly so as "to evoke the theme of Appellant's
facility," somehow is nonetheless "arbitrary."
Ser. No. 75/899,614
8
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 "Fisherman's Wharf" in San
Francisco?

The services rendered herein in no way
relate to the "Fisherman's Wharf" in San
Francisco. .... ... Applicant's services
in no way depict Fisherman's Wharf in San
Francisco. As indicated above, the use of
the term FISHERMAN'S WHARF 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 FISHERMAN'S WHARF has no
specific meaning in relation to the services
.... Rather, it is an arbitrary mark whose
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
"[i]t is a very common business practice to name casino hotels
and parts thereof after various geographical terms which relate
to the theme of the given hotel casino complex." As examples
thereof, applicant noted that, besides the previously mentioned
properties named after the cities of New York and Paris, "there
are in existence in Las Vegas, Nevada casino hotel facilities
using [the] geographically descriptive words of: ... Santa Fe;
Ser. No. 75/899,614
9
Rio (a reference to Rio de Janeiro); Barbary Coast (an area in
San Francisco); Sahara (a reference to the Sahara Desert)[;] and
others."
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 "Fisherman's Wharf" is
a well known, if not famous, area or section of San Francisco.
She also has 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.
Ser. No. 75/899,614
10
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
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.
Ser. No. 75/899,614
11
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.
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.
Ser. No. 75/899,614
12
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."

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
Ser. No. 75/899,614
13
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
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
Ser. No. 75/899,614
14
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
services involved therein, accordingly reasons that, as
previously noted, the term "FISHERMAN'S WHARF" 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 FISHERMAN'S
WHARF. 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.

Ser. No. 75/899,614
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.5 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

5 We judicially notice, for instance, that in this regard The Random
House Dictionary of the English Language (2d ed. 1987) at 1966 defines
"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. 75/899,614
16
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 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"].
Ser. No. 75/899,614
17
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.6 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 ninth land in the
applicant's African-themed amusement park, "EGYPT" found merely

6 Unlike, for example, the two previously cited cases involving the
"CAESARS PALACE" mark, it is important to remember that this appeal
involves the name of an actual, existing place which is sought to be
appropriated as a mark for services associated with a hotel casino
entertainment complex. It should also be kept in mind that this case
involves only the issue of mere descriptiveness, rather than
genericness, and that it does not involve the question of possible
acquired distinctiveness of the term "FISHERMAN'S WHARF" under Section
2(f) of the Trademark Act, 15 U.S.C. §1052(f), for any of applicant's
services.

Ser. No. 75/899,614
18
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]. While presently still an
intent-to-use application, applicant has admitted, and the
evidence clearly supports, the fact that applicant's services
will be rendered in the context of a San Francisco-themed resort
and that such facility will include a distinct area designated
as "FISHERMAN'S WHARF," which will be built and decorated to
evoke the ambiance or experience of the Fisherman's Wharf area
of the city. Moreover, while Fisherman's Wharf 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. Fisherman's
Wharf, furthermore, plainly is not a place devoid of commercial
activity inasmuch as applicant has admitted, as noted
previously, that "[t]he San Francisco Fisherman's Wharf is a
section of that city where fishing and sightseeing boats moor"
and the record additionally reflects that it is home to such
businesses as hotels and restaurants.
We therefore agree with the Examining Attorney that,
in this case, the record sufficiently establishes that customers
for applicant's entertainment services, consisting of live
Ser. No. 75/899,614
19
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 "FISHERMAN'S WHARF"
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
Fisherman's Wharf area of that city. Fisherman's Wharf, as the
"NEXIS" excerpts show, is a well known--if not famous--San
Francisco landmark which, like such others as Coit Tower,
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 mooring at
Fisherman's Wharf in San Francisco of fishing and sightseeing
boats, we find significant applicant's admission that the use of
the term "FISHERMAN'S WHARF" in connection with its services "is
merely to evoke the theme of the facility planned by Applicant."
Ser. No. 75/899,614
20
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 "FISHERMAN"S WHARF" be
evocative of a section of San Francisco 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
Fisherman's Wharf area 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. Applicant also significantly
concedes that, as previously noted, "[i]t is a very common
business practice to name casino hotels and parts thereof after
various geographical terms which relate to the theme of the
given hotel casino complex," listing among the examples thereof,
in Las Vegas alone, the "geographically descriptive words": New
York, New York; Paris; Santa Fe; and Rio. Clearly, on this
record, there is no doubt that the theme or décor utilized in
Ser. No. 75/899,614
21
rendering services of the kinds typically provided by a hotel
casino entertainment complex, such as those applicant intends to
offer under the term "FISHERMAN'S WHARF," 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 FISHERMAN'S WHARF
to describe the aforementioned services," we concur with the
Examining Attorney that, as argued in her brief, "[c]ompetitors
may very well want to use the FISHERMAN'S WHARF 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 Fisherman's
Wharf, they plainly should be entitled to refer to or otherwise
describe that section by the term "FISHERMAN'S WHARF," since
that term--being the proper noun or name by which that renowned
geographical area and landmark of San Francisco is known--is
obviously the most evocative or immediately informative
designation therefor. As the Examining Attorney, for instance,
Ser. No. 75/899,614
22
further notes in her brief, use of "the term FISHERMAN'S WHARF
for casinos decorated to look like San Francisco's FISHERMAN'S
WHARF 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
similarly would understand and expect, upon encountering the
term "FISHERMAN'S WHARF" 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
"FISHERMAN'S WHARF 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 "FISHERMAN'S WHARF" which is ambiguous, incongruous or
susceptible, perhaps, to any plausible meaning other than
immediately conveying information as to the theme of such
Ser. No. 75/899,614
23
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 "FISHERMAN'S WHARF"
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,
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
"FISHERMAN'S WHARF" 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 Fisherman's Wharf section of
San Francisco.7 Rather, as applicant's president reportedly

7 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):

Ser. No. 75/899,614
24
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 perceive the term "FISHERMAN'S WHARF"
as designating the theme or motif of applicant's services
instead of their source or origin.
Accordingly, because the term "FISHERMAN'S WHARF"
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

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. 75/899,614
25
the meaning of the statute.8 See In re Busch Entertainment
Corp., supra at 1134.

8 The dissent, perhaps by its failure to come to grips with all of the
facts of record, finds that "[t]he difference between the facts of
this case and Busch Entertainment could hardly be more striking."
While the dissent is correct that, as to the term "FISHERMAN'S WHARF,"
"[t]here is no evidence that there are numerous hotels and casinos
using the same geographic term" (emphasis added), we note that in
Busch, supra at 1131, there were but two instances of third-party use
of Egyptian themes, namely, "publicity about a Redlands, California,
Egyptian theme park opening in 1996 as well as Circus Circus's
Egyptian-pyramid theme park." In any event, while the presence or
absence of third-party use of a term in a descriptive manner has long
been a factor in determining the issue of mere descriptiveness, it is
settled that the fact that an applicant is or intends to be the first
to use a term in connection with its goods or services does not
justify registration where, as here, the term is shown to be merely
descriptive thereof. See, e.g., In re Quik-Print Copy Shop, Inc., 616
F.2d 523, 205 USPQ 505, 507 n. 8 (CCPA 1980); and In re National
Shooting Sports Foundation, Inc., 219 USPQ 1018, 1020 (TTAB 1983). As
to the dissent's assertion that "[t]here also does not appear to be
any need for other hotels or casinos to use the same geographic term,
as there would be for theme parks to use the same terms for their
themes," it would seem to bear repeating again that, not only does the
record reveal that two competitors of applicant have announced their
intentions to build San Francisco-themed hotel casino entertainment
complexes which will replicate or simulate various San Francisco
landmarks, including Fisherman's Wharf, but applicant has admitted
that "[i]t is a very common business practice to name casino hotels
and parts thereof after various geographical terms which relate to the
theme of the given hotel casino complex." Furthermore, nothing in the
record demonstrates that such terms do indeed function as service
marks, as the dissent assumes, or that they are registrable without
resort to a showing of acquired distinctiveness in accordance with
Section 2(f) of the statute.

The dissent recognizes that "Fisherman's Wharf would simply be
one element of the San Francisco theme" of applicant's services, yet
insists that "[i]t obviously takes some imagination for a purchaser to
come to the understanding that terms that may be associated with San
Francisco, such as Fisherman's Wharf, Moscone Center, Haight-Ashbury,
Lombard Street, Coit Tower, or cable cars, would be terms used to
describe San Francisco-themed services." How a term which is the name
of a widely known San Francisco landmark does not immediately describe
a significant element of a San Francisco theme for applicant's
services is not satisfactorily explained and is troubling given
applicant's admission that its intended use of "FISHERMAN'S WHARF" "is
merely to evoke the theme of Applicant's facility."
Ser. No. 75/899,614
26
Decision: The refusal under Section 2(e)(1) is
affirmed.
Drost, Administrative Trademark Judge, dissenting:

The majority has offered the following test to find
that the mark in this case is merely descriptive:

As is plain from our narrow extension of the holding in Busch, it
is only in the limited instance where the record demonstrates 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) that a term which names a
place, when used as a theme of the goods or services, would generally
be considered to be merely descriptive of a significant feature or
characteristic of the goods or services. Most commonly, although not
without exception, the term at issue would be a proper noun or name
(e.g., "Egypt," "Fisherman's Wharf," "Coit Tower," "Lombard Street")
rather than a common noun (e.g., "ancient country," "boating dock,"
"observation tower," "crookedest street"). Although the dissent views
this case as "an unnecessary extension of our descriptiveness case law
or a new type of geographic refusal not provided for in the Lanham
Act," the test announced herein, when properly applied, does not
characterize or place at risk a geographical term as merely
descriptive 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. Clearly, and unlike
the Egyptian motif involved in Busch, a hotel does not sufficiently
simulate or replicate the ambiance or experience of Fisherman's Wharf
if its décor, as the dissent suggests, just "included pictures of San
Francisco on the wall[s], table-sized replicas of San Francisco
landmarks, and rooms named after San Francisco landmarks."

Finally, the record confirms that the theme or motif of a hotel
casino entertainment complex is a significant feature of the services
provided by such a facility. Las Vegas would not continue to witness
the building of new gambling resorts bearing city names and other
motifs if the themes of such complexes were not a major customer
attraction. Plainly, with the ready availability of gaming and star-
studded entertainment, it is the theme of a hotel casino entertainment
complex, given the faithfulness and magnitude with which it is often
carried out, that differentiates the accommodations and other
amenities surrounding the gaming experience and which constitutes a
significant factor in a customer's selection of such a facility.
Ser. No. 75/899,614
27
(1) 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);
(2) then a term that names the place;
(3) when used as a theme of the goods or services, is
generally considered to be merely descriptive.
Slip op. at 14-15.
The mark FISHERMAN'S WHARF has been refused
registration for hotel, restaurant, casino and other services on
the ground that it is merely descriptive (15 U.S.C. §
1052(e)(1)), not because it is primarily geographically
descriptive or primarily geographically deceptively
misdescriptive (15 U.S.C. § 1052(e)(2) and (3)).
I respectfully dissent.
The majority relies upon In re Bush Entertainment
Corp., 60 USPQ2d 1130 (TTAB 2000) for its holding here. That
case stands for the unremarkable proposition that when
competitors are using a variety of names to refer to the various
themes in their theme parks, then a term that describes the
theme of a particular area of a park is merely descriptive. In
effect, all theme park operators should be able to call an area
of a theme park devoted to Egypt by that name. "We agree with
the Examining Attorney that this record sufficiently
Ser. No. 75/899,614
28
demonstrates that the public understands the name 'EGYPT' as
used in association with applicant's amusement park services to
indicate the subject matter or country being represented or
simulated." Busch Entertainment, 60 USPQ2d at 1133-34. In the
same way that a section of a museum devoted to Egyptian culture
or an area of a bookstore featuring books on Egypt would be
described by the term "Egypt," the amusement park in Busch
Entertainment would similarly be merely descriptive of its
content. Similarly, a section of a bookstore, museum, or theme
park devoted to the history of modern transportation and named
"Cars" would likewise be merely descriptive. Id. at 1134
("These country names should be just as unregistrable as, say,
such words as 'Automobiles,' 'Trains,' 'Airplanes' and 'Ships'
designating various areas in a theme park devoted to means of
transportation").
However, to be merely descriptive, the record should
demonstrate that the industry uses these words to describe their
services rather than to distinguish their services from those of
others. The difference between the facts of this case and Busch
Entertainment could hardly be more striking. First, the record
in that case noted that a theme park was "an amusement park in
which landscaping, buildings, and attractions are based on one
or more specific themes, as jungles, wildlife, fairy tales, or
the Old West." Busch Entertainment, 60 USPQ2d at 1131. Second,
Ser. No. 75/899,614
29
the examining attorney also submitted evidence that "other
amusement parks offer visitors a 'sampling of foreign lands.'"
Id.
In sharp contrast to that record, the majority here
relies on that fact that there are other hotels that use
geographic terms as service marks for their hotel services: NEW
YORK, NEW YORK; PARIS; RIO; and SANTA FE. There is no evidence
that there are numerous hotels and casinos using the same
geographic term. There also does not appear to be any need for
other hotels or casinos to use the same geographic term, as
there would be for theme parks to use the same terms for their
themes.1
I find it curious that the majority relies on what
appears to be trademark usage of geographic terms to support its
argument that applicant's use of another geographic term is
merely descriptive. There is no evidence that suggests that the

1 The registration of the mark FISHERMAN'S WHARF for applicant's
services would not prevent anyone from using a San Francisco theme for
its hotel, restaurant, or casino services. Furthermore, the fact that
there is apparently a copyright dispute regarding the plans for
Ruffin's San Francisco theme hotel (Free Speech, "I Lost My Shirt in
San Francisco," p. 15) or that another party announced (October 2000)
that he "would like to build a miniature City by the Bay" (id. at 1)
apparently after the filing date of this application (January 20,
2000) hardly demonstrates that applicant's mark is merely descriptive.
Traditionally, trademark law has resolved questions of multiple uses
of a mark by determining the priority of use and whether there is a
likelihood of confusion, not by classifying the mark as merely
descriptive. Other than this, the other evidence in the record
primarily describes the trade dress that will appear in the San
Francisco themed hotel-casino.

Ser. No. 75/899,614
30
names NEW YORK, NEW YORK; RIO; SANTA FE; and PARIS are not being
used to distinguish the source of one hotel or casino from those
of another, i.e., as a trademark. In Busch Entertainment, the
exact opposite was shown. The industry as a whole apparently
needed and used these terms descriptively to describe the themed
areas of their parks. In other words, the terms in that case
were used to distinguish one part of a park from other parts of
the park but not to distinguish the source of the services.
Second, another significant difference between this
case and Busch Entertainment is that the term "Fisherman's
Wharf" is not the equivalent of the term "Egypt." The evidence
in this case indicates that applicant intends to use its mark on
a San Francisco-themed casino and hotel complex, not a
Fisherman's Wharf-themed casino. See Free Speech; I Lost My
Shirt in San Francisco, p.15 ("Advent stated that he has been
working with Ruffin for the past two years to create a San
Francisco-themed megaresort"). Fisherman's Wharf would simply
be one element of the San Francisco theme. Assuming that San
Francisco is merely descriptive for the theme of applicant's
hotel and other services, applicant's FISHERMAN'S WHARF mark
would be one step removed from that term in the same way that
the term "Nile" may not necessarily be descriptive of a section
of a bookstore devoted to books on Egypt. It obviously takes
some imagination for a purchaser to come to the understanding
Ser. No. 75/899,614
31
that terms that may be associated with San Francisco, such as
Fisherman's Wharf, Moscone Center, Haight-Asbury, Lombard
Street, Coit Tower, or cable cars, would be terms used to
describe San Francisco-themed services. While the majority
views these terms as "readily, if not instantly recognizable
icon[s] for the city itself," this does not necessarily
translate into the terms being descriptive. The fact that the
public may make a word association between Fisherman's Wharf and
San Francisco does not make it the equivalent of San Francisco.
Third, the test enunciated by the majority is
extremely limited. While the majority has not defined what it
means by "to replicate or otherwise simulate the ambiance or
experience of a place (in whole or meaningful part)," it
apparently is a fairly rigorous test. It does not apply to what
would appear to be a modest San Francisco-themed hotel that
included pictures of San Francisco on the wall, table-sized
replicas of San Francisco landmarks, and rooms named after San
Francisco landmarks. The majority notes that "it can scarcely
be argued that" a hotel whose décor consists of "pictures of San
Francisco on the walls, table-size models of the Golden Gate
Bridge and other San Francisco landmarks in the lobby, and San
Francisco names for the meeting rooms" replicates a "Fisherman's
Ser. No. 75/899,614
32
Wharf2 ambiance." A theme is described as "an idea, point of
view, or perception embodied or expanded upon in a work of art."
Webster's II New Riverside University Dictionary (1984). The
majority would apparently not define a theme as broadly as this
definition. However, what it takes to replicate or otherwise
simulate the ambiance or experience of a place beyond a near
exact copy of a city scene is not clear.
Fourth, the majority's test for descriptiveness is so
limited that it would apply primarily to Las Vegas-type hotels
and casinos. What is not encompassed by the majority's rule is
noteworthy.
The mark FISHERMAN'S WHARF for a hotel without any
theme would not be subject to this refusal.
The mark FISHERMAN'S WHARF for a hotel with what many
would consider a San Francisco theme (pictures, models, names,
etc.) would not be subject to this refusal.
Even applicant's proposed hotel theme would not be
subject to this refusal if other hotels and casinos were not
replicating the experiences or ambiances of places.
The refusal also apparently would not apply if
applicant had chosen a non-place theme such as airplanes or

2 I assume that Fisherman's Wharf is being used interchangeably with
San Francisco.
Ser. No. 75/899,614
33
pirates for its hotel and copied the ambiance or experience of a
pirate ship or a plane.3
Apparently, even if applicant had chosen the ambiance
or experience of an uninhabited place, the refusal does not seem
to apply. The majority noted that Fisherman's Wharf "is not a
place devoid of commercial activity," in affirming the refusal
in this case.4
In addition, this type of refusal applies almost
exclusively to service marks. While the majority refers to
"goods or services," it is difficult to see how a trademark for
goods could ordinarily replicate the ambiance or experience of
an
area.5

3 Although if applicant had chosen a cable car theme, apparently it
would have been refused under the majority's analysis because "cable
cars" could be considered "an icon for the city itself."

4 See In re Nantucket, Inc., 677 F.2d 95, 213 USPQ 889, 897 (CCPA 1982)
(Nies, concurring) ("A geographic name is not unprotectible or
unregistrable because it can be labeled a geographic name, but because
it tells the public something about the product or the producer about
which his competitor also has a right to inform the public. Thus, the
names of places devoid of commercial activity are arbitrary usage. In
this category are names of places such as ANTARCTICA, MOUNT EVEREST,
or GALAPAGOS, at least when used for ordinary commercial products,
such as beer and shoes").

5 I also would not find that applicant's amusement arcades are the
equivalent of the Busch Entertainment amusement park services. We are
bound to consider the services as they are identified in the
application. While there are some similarities between an amusement
arcade and amusement park services, the record does not contain any
evidence that these services are the same or that the arcade industry
has sections of arcades built around themes, including themes of
various countries.
Ser. No. 75/899,614
34
I agree with the majority's conclusion that its
holding is a narrow extension of Busch Entertainment. It is
apparently limited to service marks containing a name of a place
that is not devoid of commercial activity. The services must
also be provided in an establishment that nearly exactly
replicates the ambiance or experience of a place. A mark
meeting these requirements may then be found to be merely
descriptive if its competitors are also replicating or
simulating places. Applied in this restricted manner, this "Las
Vegas" rule is an unnecessary extension of our descriptiveness
case law or a new type of geographic refusal not provided for in
the Lanham Act. It treats marks for the same services
differently based on the specific ambiance or experience the
trademark owner chooses to replicate. It distinguishes between
unregistrable and registrable subject matter by the faithfulness
and magnitude of the trademark owner's desire to establish an
ambiance or experience of a place. What the public might see as
a theme of a place would not meet the test because it is not
enough of a replication or simulation in whole or in meaningful
part of a place. Since I believe that this narrow extension of
Busch Entertainment will lead to inconsistent results and
confusion, it would be better to deal with this case under our
established case law.
Ser. No. 75/899,614
35
We have long held that any doubts in descriptiveness
cases should be resolved in favor of the applicant. In re
Morton-Norwich Products, Inc., 209 USPQ 791, 791 (TTAB 1981)
(The Board's practice is "to resolve doubts in applicant's favor
and publish the mark for opposition"). I believe that, at the
very least, there are doubts about whether applicant's mark is
descriptive, which should be resolved in applicant's favor.