adp Gauselmann GmbH

Trademark Trial and Appeal Board

Jan 26, 2001

No. 75371661 (T.T.A.B. Jan. 26, 2001)

01/26/01
Paper No. 20
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re adp Gauselmann GmbH
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Serial No. 75/371,661
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Horst M. Kasper for adp Gauselmann GmbH
Robin S. Chosid, Trademark Examining Attorney, Law Office 102
(Thomas Shaw, Managing Attorney).
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Before Simms, Bucher and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Applicant, adp Gauselmann GmbH, has appealed from the final
refusal of the Trademark Examining Attorney to register the mark
VOLCANO ISLAND for the following goods:
Coin-operated gambling machines, namely slot machines, video
slot machines, video gaming machines, electronic card and
poker machines, electronic backgammon; casino apparatuses,
namely computers and computer programs that account for
gambling wagers, computer programs for use in a gaming
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/350,146
2
environment to improve communication; casino video slot
machine accounting software."1
The Trademark Examining Attorney has refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant's mark, when applied to applicant's goods, so resembles
the registered mark VOLCANO for "gaming machines, namely, slot
machines with or without a video output" as to be likely to cause
confusion."2
When the refusal was made final, applicant appealed.3
Briefs have been filed, but an oral hearing was not requested.4
1 Application Serial No. 75/371,661, filed October 6, 1997, based on a
claim of priority under Section 44(d) of the Trademark Act and alleging
a bona fide intention to use the mark in commerce. Applicant submitted
a certified copy of the foreign registration on May 26, 1998 and an
amendment to allege use on January 28, 1999 alleging a date of first
use on September 13, 1994 and first use in commerce in October 1994.
2 Registration No. 1,775,080; issued June 8, 1993; Sections 8 and 15
affidavits filed.
3 The application was assigned to a different Examining Attorney for
the appeal brief.
4 Applicant’s brief was filed on January 28, 2000. On February 3,
2000, applicant filed a declaration in support of acquired
distinctiveness under Section 2(f) of the Act. The Board, noting the
untimeliness of the request, the failure of applicant to offer any
explanation for the delay, and the fact that a claim of acquired
distinctiveness is not relevant to the likelihood of confusion basis
for refusal, stated in an order mailed May 30, 2000, that the
application would not be remanded for consideration of the claim of
acquired distinctiveness. Accordingly, any arguments in applicant's
brief relating to the acquired distinctiveness of the mark have not
been considered. On June 2, 2000, applicant filed another declaration,
this time attesting to the lack of "any confusion anywhere relating to
the trademark 'Volcano Island'." The declaration is signed by a person
identified as the marketing manager of Atronic International GmbH,
which, from the references to that entity in applicant's brief, appears
to be applicant's own company. This evidence is also untimely and will
Ser. No. 75/350,146
3
Here, as in any likelihood of confusion analysis, we look to
the factors set forth in In re E.I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), giving particular attention
to the factors most relevant to the case at hand, including the
similarity of the marks and the relatedness of the goods or
services. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976) and In re Azteca
Restaurant Enterprises Inc., 50 USPQ2d 1209 (TTAB 1999).
The respective goods are in part identical, applicant’s
goods fully encompassing those in the cited registration.
Because the goods are legally identical, they must be deemed to
travel in the same channels of trade to the same ultimate users
and purchasers. See In re Smith and Mehaffey, 31 USPQ2d 1531
(TTAB 1994). Applicant does not dispute the identity of the
goods but, instead, essentially argues that because of the
dissimilarity of the marks and the sophistication of the
purchasers, confusion is not likely to occur.
Thus we turn our attention to the marks, keeping in mind
that when marks would appear on virtually identical goods or
services, the degree of similarity between the marks necessary to
support a finding of likely confusion declines. Century 21 Real
not be considered, and even if considered would not affect the outcome
of this case.
Ser. No. 75/350,146
4
Estate v. Century Life, 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir.
1992).
Applicant argues that the differences in meanings associated
with the two marks distinguishes the marks and avoids confusion.
Applicant claims that VOLCANO and VOLCANO ISLAND are different
"geographical concepts," the term VOLCANO referring to "a certain
type of mountain" and conveying a sense of "danger" and "menace,"
and the term VOLCANO ISLAND conveying the meaning of "a quiet
place" of "leisure."
We find that the marks VOLCANO and VOLCANO ISLAND are
similar in sound, appearance and meaning. Except for the word
ISLAND in applicant's mark, the two marks are identical. It has
been held that the addition of another word to one of two
otherwise similar marks will not serve to avoid a likelihood of
confusion particularly where additional word does not
significantly change the meaning the terms convey. See In re
Champion International Corporation, 196 USPQ 48 (TTAB 1977). See
also Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735
(TTAB 1991), affirmed in unpublished opinion, Appeal No. 92-1086
(Fed. Cir. June 5, 1992); In re Christian Dior, S.A., 225 USPQ
533 (TTAB 1985) and In re Cosvetic Laboratories, Inc., 202 USPQ
842 (TTAB 1979).
While the two marks do not project identical images, the
combination of VOLCANO and ISLAND only slightly alters the
Ser. No. 75/350,146
5
meaning conveyed by the word VOLCANO alone. Instead of a single
volcano, the term VOLCANO ISLAND simply evokes the very
compatible image of one or more volcanoes on an island, a place
where volcanoes are known to appear. This minor difference in
meaning is not sufficient to avoid confusion particularly when we
consider that the marks are applied to identical goods. In the
context of these goods, the word ISLAND, if noted or remembered
at all, is likely to suggest a different version of registrant's
VOLCANO game rather than a different source for the game.
Moreover, applicant’s own specimens, depicting an exploding
volcano and the words "explosive volcano bonus," contradict the
peaceful, restful image applicant claims the term VOLCANO ISLAND
conveys.
Applicant's claim that the presence of its corporate name
on the gaming machines serves to indicate the source of the
machines in applicant is irrelevant inasmuch as that name is not
part of the mark sought to be registered. Blue Cross and Blue
Shield Association v. Harvard Community Health Plan Inc., 17
USPQ2d 1075, 1077 (TTAB 1990). Applicant further argues that
"even without trademarks, consumers would be expected to
distinguish the origin of a gaming machine based on the features
of such gaming machine [e.g., a television screen simulating five
reels on applicant's machines as distinguished from the
mechanical three reels that applicant claims registrant's slot
Ser. No. 75/350,146
6
machines use] even in a complete absence of a trademark." (Brief,
pp.8-9). First, the question is not whether purchasers can
differentiate the goods themselves but rather whether purchasers
are likely to confuse the source of the goods. See Helene Curtis
Industries Inc. v. Suave Shoe Corp., 13 USPQ2d 1618 (TTAB 1989).
Moreover, the question of likelihood of confusion is determined
on the basis of the identification of goods set forth in the
application and registration, without regard to special features
of the goods or other limitations which are not reflected
therein. See J & J Snack Foods Corp. v. McDonalds' Corp., 932
F.2d 1460, 1464, 18 USPQ2d 1889, 1892 (Fed. Cir. 1991) and
Octocom Systems inc. v. Houston Computers Services Inc., 918 F.2d
937, 942, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Thus, for
purposes of this analysis, we must presume that the gaming
machines offered by registrant are identical to applicant's
machines in all respects.
We recognize that the actual purchasers for these goods
would be casino owners or operators or other sophisticated
business purchasers who are knowledgeable about the products they
are buying. As applicant appears to contend, slot machines are
not technically consumer goods "like sugar or salt."
Nevertheless, the sophistication of the actual purchasers for
these products is not sufficient to avoid confusion in this case.
Ser. No. 75/350,146
7
It is established that confusion among ultimate users of
products as well as purchasers is proscribed by Section 2(d) of
the Act. In re Artic Electronics Co., Ltd., 220 USPQ 836 (TTAB
1983) and In re Star Pharmaceuticals, Inc., 221 USPQ 84 (TTAB
1984). The ultimate users of slot machines include ordinary
members of the general public who are not likely to be
sophisticated. In any event, the respective marks and products
in this case are so similar that even the sophisticated,
knowledgeable purchasers of these machines are likely to believe
that the machines come from the same source. See Hilson Research
Inc. v. Society for Human Resource Management, 27 USPQ2d 1423
(TTAB 1993).
We conclude that purchasers familiar with registrant’s
gaming machines sold under its mark VOLCANO would be likely to
believe, upon encountering applicant’s mark VOLCANO ISLAND for
directly competitive products, that such goods originated with or
are somehow associated with or sponsored by the same entity.
Decision: The refusal to register is affirmed.