Video Gaming Technologies, Inc.

Trademark Trial and Appeal Board

Apr 4, 2006

No. 78294596 (T.T.A.B. Apr. 4, 2006)

Mailed:
April 4, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Video Gaming Technologies, Inc.
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Serial No. 78294596
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Melinda B. Buurma of Howard & Howard Attorneys, P.C. for
Video Gaming Technologies, Inc.

Christopher L. Buongiorno, Trademark Examining Attorney, Law
Office 102 (Thomas V. Shaw, Managing Attorney).
_______

Before Quinn, Hohein and Bucher, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Video Gaming Technologies, Inc. seeks registration on
the Principal Register of the mark LUCKY LEPRECHAUN
(standard character drawing) for goods identified in the
application, as amended, as follows:
computer software and/or firmware for
operating games of chance on any computerized
platform, namely, dedicated gaming consoles,
video and reel based slot machines, and video
lottery terminals; gaming devices, namely,
gaming machines, slot machines, computerized
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Serial No. 78294596
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bingo machines with or without video output”
in International Class 9.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney
has found that applicant’s mark, when used in connection
with the identified goods, so resembles the mark
LEPRECHAUN’S GOLD (standard character drawing) registered for
goods identified as “currency and credit operated slot
machines and gaming devices, namely, gaming machines for use
in gaming establishments” also in International Class 9, as
to be likely to cause confusion, to cause mistake or to
deceive.2
Applicant and the Trademark Examining Attorney have
fully briefed the case, but applicant did not request an
oral hearing. We affirm the refusal to register.
Applicant argues that the marks are distinguishable in
sight, sound, meaning and commercial impression when
considered in their entireties; that the channels of trade

1 Application Serial No. 78294596 was filed on September 1,
2003 based upon applicant’s allegation of a bona fide intention
to use the mark in commerce. In an Amendment to Allege Use filed
on April 25, 2005, applicant claimed first use of the mark on
these goods anywhere and first use in commerce at least as early
as September 1999.
2 Reg. No. 2610753 issued to WMS Gaming Inc. on August 20,
2002, based upon allegations of use in commerce since at least as
early as October 1, 2001.
Serial No. 78294596
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are dissimilar; that the consumers are highly sophisticated
purchasers who are not likely to be confused as to the
source of the respective goods marketed under these marks;
and that the marks have coexisted for four years with no
instances of actual confusion.
By contrast, the Trademark Examining Attorney concludes
that the two marks create similar commercial impressions;
that both marks will be used to identify gaming machines and
slot machines; and that applicant and registrant will likely
sell these similar goods through the same trade channels to
the same classes of purchasers.
Likelihood of confusion
Our determination under Section 2(d) is based upon an
analysis of all of the facts in evidence that are relevant
to the factors bearing upon the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
goods or services. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Serial No. 78294596
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The marks
Accordingly, we turn first to the du Pont factor
focusing on the similarity of the marks in their entireties
as to appearance, sound, connotation and commercial
impression. See Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005). Applicant argues that even
though the marks both contain the word LEPRECHAUN (or
LEPRECHAUN’S), when compared in their entireties, these
marks are not confusingly similar.
When viewed in a side-by-side comparison, registrant’s
mark contains the possessive form of the word “leprechaun’s”
while applicant’s mark does not, the placement of the word
LEPRECHAUN[’S] is inverted and the respective marks include
different secondary terms.3
However, we agree with the Trademark Examining Attorney
that when considered in their entireties, the respective

3 As the Trademark Examining Attorney correctly points out, a
side-by-side comparison is not the proper test to be used in
determining the issue of likelihood of confusion inasmuch as it
is not the ordinary way that customers will be exposed to the
marks. Instead, it is the similarity of the general commercial
impression engendered by the marks that must determine, due to
the fallibility of memory and the concomitant lack of perfect
recall, whether confusion as to source or sponsorship is likely.
Accordingly, at least with respect to ordinary purchasers, they
normally retain a general rather than a specific impression of
marks. See Envirotech Corp. v. Solaron Corp., 211 USPQ 724, 733
(TTAB 1981); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975); and Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973).
Serial No. 78294596
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marks are quite similar in connotation and commercial
impression due to the shared presence of the term
LEPRECHAUN[’S]. This term appears, at worst, to be slightly
suggestive when used in connection with gaming machines.
While the respective marks must be considered in their
entireties, it is nevertheless proper to recognize that one
feature of a mark may be more significant in creating a
commercial impression. Greater weight is given to that
dominant feature in determining whether there is a
likelihood of confusion. See In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985); and Tektronix,
Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693 (CCPA
1976). Application of these standards to the instant case
indicates that the substantially identical term
LEPRECHAUN/LEPRECHAUN’S creates such strong imagery that the
connotations associated with leprechauns dominate both
marks.
Even the secondary terms in these marks fail to
distinguish the marks as to connotation or commercial
impression. The Trademark Examining Attorney argues from a
series of third-party registrations that these two secondary
terms are widely-used terms in naming games of chance in
applicant’s and registrant’s fields of gaming:
Serial No. 78294596
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Terms such as “lucky” and “gold” are widely
used within the gaming and casino industries
to promote games of chance and are unlikely
to be perceived as additional source
indicators that would distinguish both marks.

Moreover, in the specific context of these composite
marks, the secondary terms actually create similar meanings
and commercial impressions. In applicant’s mark, the word
LUCKY calls to mind the idea that leprechauns are said to
give humans objects which bring “luck” or good fortune.4 We
notice that the trade dress on applicant’s gaming machine
shows the image of a leprechaun’s head
in the same frame as an overflowing pot
of gold. Similarly, while the meaning
and commercial impression created by the registered mark is
dominated by the identical term LEPRECHAUN’S, the addition
of the word GOLD calls to mind the same idea, namely, that
leprechauns have hidden pots of gold. The trailing word
GOLD reinforces the dominant mythologies surrounding
leprechauns but creates no disparate imagery to impact the
meaning or commercial impression of the registered mark.

4 We take judicial notice of dictionary entries for the word
“leprechaun”: “2. a conventionalized literary representation of
this figure as an old man who will reveal the location of a
hidden crock of gold to anyone who catches him.” THE RANDOM HOUSE
DICTIONARY OF THE ENGLISH LANGUAGE (Second Edition, Unabridged, 1987),
p. 1102; “a mischievous elf of Irish folklore usu. conceived as a
shoemaker and believed to reveal the hiding place of treasure if
caught.” WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH
LANGUAGE (Unabridged 1993), p. 1295.
Serial No. 78294596
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The goods
Applicant is right in arguing that the respective goods
are not necessarily related simply because they coexist in
the same broad industry. As argued by applicant,
registrant’s involved goods carrying the LEPRECHAUN’S GOLD
mark are three-reel “slot machines” – class-3 devices for
Las Vegas-style casinos. We also accept as true applicant’s
representations that its LUCKY LEPRECHAUN machines are
class-2 devices. Nonetheless, that is not the end of our
inquiry on the du Pont factor focusing on the relationship
of the goods.
As our primary reviewing court has often stated, the
question of likelihood of confusion is determined on the
basis of the identification of goods and services set forth
in the application and registration, rather than on the
basis of what evidence might show the actual nature of the
goods and services or purchasers to be. See J & J Snack
Foods Corp. v. McDonald’s Corp., 932 F.2d 1460, 1464, 18
USPQ2d 1889 (Fed. Cir. 1991); and Octocom Systems Inc. v.
Houston Computers Services Inc., 918 F.2d 937, 942, 16
USPQ2d 1783 (Fed. Cir. 1990).
There are no limitations in applicant’s identification
of goods as to classes of machines. In fact, on its face,
applicant’s identification of goods is broad enough to
Serial No. 78294596
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include both class-2 (electronic bingo) and class-3
(electronic slot machine) gaming devices. Moreover, it
stands to reason that over the years, technology continues
to blur the distinctions between these classes of machines.
Channels of trade
In its appeal brief, applicant states that the gaming
industry is highly regulated, and argues that as a result,
the trade channels for these types of machines are
different. However, neither applicant’s nor registrant’s
identifications of goods are restricted as to trade channels
or classes of purchasers, so we must presume that the goods
move through the same or similar trade channels to the same
or similar classes of purchasers. Additionally, the record
contains no evidence to demonstrate how the operation of
these different classes of regulated machines move to
casinos, bingo parlors, etc., and exactly what impact, if
any, that would have on the trade channels or classes of
purchasers for the respective goods herein.
Sophisticated purchasers and users
As an additional consideration, applicant contends that
confusion is unlikely because purchasers of gaming machines
are knowledgeable, sophisticated consumers who are familiar
with the industry, with the different classes of gaming
Serial No. 78294596
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devices, and with the manufacturers and vendors of equipment
that they are accustomed to dealing with. As noted by
applicant, “[T]he cost of these goods range in the thousands
of dollars and are not the type of goods that would be
purchased casually by … ordinary consumers.”
Assuming that at least some purchasers of gaming
machines are highly sophisticated and discriminating
consumers, we observe that the fact that consumers may
exercise care or thought in choosing the respective products
“does not necessarily preclude their mistaking one trademark
for another” or that they otherwise are entirely immune from
confusion as to source or sponsorship. Wincharger Corp. v.
Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA 1962).
See also In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988);
and In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB
1983). Here, the overall commercial impressions engendered
by applicant’s LUCKY LEPRECHAUN mark and registrant’s
LEPRECHAUN’S GOLD mark are so similar, due to the shared
imagery derived from the term LEPRECHAUN[’S], that the
contemporaneous use thereof in conjunction with gaming
machines, is likely to cause confusion, even among
knowledgeable and discriminating consumers of such goods.
We find, however, that even if the initial purchasers
of applicant’s gaming devices are professional, careful
Serial No. 78294596
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purchasers (for example, employees or agents of casinos,
bingo parlors and other gaming establishments), the classes
of consumers for applicant’s and registrant’s gaming devices
also include the ultimate users of such gaming devices,
i.e., the patrons of the casinos and other gaming
establishments who encounter and use applicant’s and
registrant’s gaming devices. See In re Artic Electronics
Co., Ltd. 220 USPQ 836 (TTAB 1983) [although the initial
purchasers, i.e., owners of arcades, are sophisticated and
careful purchasers of arcade games, in determining
likelihood of confusion, consideration must also be given to
the ultimate users of the arcade games, i.e., the arcade’s
customers who are the end users of the goods].
Similarly in this case, in determining likelihood of
confusion, the classes of purchasers for applicant’s and for
registrant’s gaming devices include not only the
sophisticated initial purchasers of the gaming devices
themselves, i.e., casinos and other gaming establishments,
but also must include the ultimate users of such gaming
devices, i.e., ordinary customers of bingo parlors and
casinos. Given the fact that slot machines, electronic
bingo games and other gaming devices require a relatively
small financial commitment to begin play, these ultimate
users of gaming devices must be deemed to be ordinary
Serial No. 78294596
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consumers and impulse purchasers who do not exercise more
than an ordinary degree of care in deciding to play gaming
devices in a casino or other gaming establishment.
Applicant’s detailed description of the quirky behavior of
gamblers contained in its briefs does not convince us
otherwise. And while we have no evidence as to different
classes of customers, even if we should accept applicant’s
position that it and registrant are marketing different
classes of machines, we must conclude that casino patrons
playing a class-3 game betting against the house are also
likely at some point to be users of class-2 bingo games
playing against other players.
Contemporaneous use without actual confusion
As to the du Pont factor dealing with the length of
time during and conditions under which there has been
concurrent use without evidence of actual confusion,
applicant points to four years of coexistence without any
actual confusion. However, we have no evidence that these
respective marks have ever been used contemporaneously in
the same geographical area. As to whether there has been
sufficient opportunity for confusion to occur, the record
contains no indication of the level of sales or advertising
by applicant. The absence of any instances of actual
Serial No. 78294596
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confusion is a meaningful factor only where the record
indicates that, for a significant period of time, an
applicant’s sales and advertising activities have been so
appreciable and continuous that, if confusion were likely to
happen, any actual incidents thereof would be expected to
have occurred and would have come to the attention of one or
both of these trademark owners. Similarly, we have no
information concerning the nature and extent of registrant’s
use, and thus we cannot tell whether there has been
sufficient opportunity for confusion to occur, as we have
not heard from the registrant on this point. All of these
factors materially reduce the probative value of applicant’s
argument regarding asserted lack of actual confusion.
Therefore, applicant’s claim that no instances of actual
confusion have been brought to applicant’s attention is not
indicative of an absence of a likelihood of confusion. See
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992). In any event, we are mindful of the fact that
the test under Section 2(d) of the Act is likelihood of
confusion, not actual confusion.
Conclusion
After careful consideration of the relevant du Pont
factors, we concur with the Trademark Examining Attorney’s
Serial No. 78294596
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conclusion that a likelihood of confusion exists.
Prospective purchasers and users are likely to assume,
incorrectly, that applicant’s LUCKY LEPRECHAUN gaming
machines are produced by the same entity that produces
registrant’s LEPRECHAUN’S GOLD gaming machines. Even
assuming that customers of gaming machines remember the
differences in sound and appearance between these respective
marks, it is still the case that the suggestive term
LEPRECHAUN, when combined with the respective secondary
terms, results in marks that overall are so similar that,
for example, consumers familiar with registrant’s
LEPRECHAUN’S GOLD mark for gaming machines could reasonably
assume, upon encountering applicant’s LUCKY LEPRECHAUN mark
for gaming machines, that applicant’s goods constitute a new
or additional line of gaming machines from registrant.
Confusion as to origin or affiliation is therefore likely to
occur from the contemporaneous use of these respective marks
in connection with identical and otherwise closely related
goods.
Decision: The refusal under Section 2(d) of the Act is
hereby affirmed.