Anchor Coin

Trademark Trial and Appeal Board

Jan 9, 2001

No. 75385414 (T.T.A.B. Jan. 9, 2001)

1/9/01
Paper No. 12
gfr
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Anchor Coin
________
Serial No. 75/385,414
_______
Daniel P. Burke of Galgano & Burke for Anchor Coin.
Christopher M. Turk, Trademark Examining Attorney, Law
Office 114 (Conrad W. Wong, Managing Attorney).
_______
Before Hanak, Hohein and Rogers, Administrative Trademark
Judges.
Opinion by Rogers, Administrative Trademark Judge:
Anchor Coin has filed an application to register the
mark BIG BUCKS BINGO for goods identified as "currency
and/or credit operated slot machines and gaming devices,
namely gaming machines."1 During prosecution, applicant
acceded to the Examining Attorney's requirement that
applicant enter a disclaimer of BINGO.
1 Serial No. 75/385,414, in International Class 9, filed October
30, 1997, based on applicant's allegation of a bona fide
intention to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/385,414
2
The Examining Attorney refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d),
because of the prior registration of BIG BUCKS for "casino
services; namely, operation of gaming machines,"2 and BIG
BUCKS SLOTS for "slot machines."3 Office records list Bally
Manufacturing Corporation as current owner of both
registrations. When the Examining Attorney made the
refusals of registration final, applicant appealed. Both
applicant and the Examining Attorney have filed briefs, but
an oral hearing was not requested.
The determination under Section 2(d) of the question
of likelihood of confusion is based on an analysis of all
of the probative facts that are relevant and for which
there is evidence of record. See In re E. I. du Pont de
Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In the analysis of likelihood of confusion presented by
this case, key considerations are the similarities or
dissimilarities of the marks, the similarity or
dissimilarity of the goods and services, and the classes of
2 Registration No. 1,847,026, issued July 26, 1994, in
International Class 41. Section 8 and 15 affidavits accepted and
acknowledged, respectively, as of March 15, 2000.
3 Registration No. 1,388,945, issued April 8, 1986, in
International Class 9. Section 8 and 15 affidavits accepted and
acknowledged, respectively, as of September 30, 1992. The
registration includes a disclaimer of "SLOTS."
Ser. No. 75/385,414
3
purchasers and ultimate users of the involved goods and
services. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
A preliminary matter to be considered is applicant's
attempt to rely on third-party registrations to show
weakness in the cited marks. In the final refusal of
registration, the Examining Attorney quite clearly
explained that applicant's submission of a list of
registration numbers and corresponding marks was
insufficient to place the third-party registrations in the
record. In applicant's brief, applicant promised to make a
future submission of copies of relevant registrations. The
Examining Attorney, in his brief, clearly objected to any
such submission and noted that all evidence to be
considered in an ex parte appeal must be made of record
prior to filing the appeal. The Examining Attorney's
position is correct. See Trademark Rule 2.142(d); see
also, authorities collected in TBMP §§ 1207.01 and 1207.03.
Therefore, the Board has not considered the third party
registrations submitted by applicant subsequent to the
submission of its appeal brief, as a “supplement” thereto.
In regard to the refusal based on the registered mark
BIG BUCKS for casino services, the Board considers first,
the marks. The registered mark is on the Principal
Ser. No. 75/385,414
4
Register and, under Section 7 of the statute, the mark is
presumed to have been validly registered. Further,
registration was obtained without resort to Section 2(f) of
the statute. Therefore, at worst, the registered mark can
be considered suggestive of registrant's services.4
Applicant's mark includes the entirety of the cited
mark, plus the disclaimed term BINGO. While even
disclaimed terms must be considered in the comparison of
marks, and in an appropriate case may contribute to a
finding of no likelihood of confusion, disclaimed matter is
typically less significant or less dominant than other
components of trademarks. Tektronix, Inc. v. Daktronics,
Inc., 534 F.2d 915, 189 USPQ 693 (CCPA 1976). Moreover, in
comparing the cited BIG BUCKS mark with applicant's BIG
BUCKS BINGO mark, the absence of any other element in the
cited mark is significant. In other words, were there
another term in the cited mark unlike any term in
applicant's mark, this might have contributed to a finding
of overall dissimilarity of the marks. Under the
circumstances, however, the marks are identical, but for
applicant's addition of a disclaimed term.
4 Any attack on the validity of the cited registration, e.g., to
establish that the mark is descriptive, is impermissible in the
context of this ex parte appeal. See In re Dixie Restaurants,
Inc., 41 USPQ2d 1531 (Fed. Cir. 1997).
Ser. No. 75/385,414
5
Turning to the goods and services, the casino services
in the cited registration are not restricted in any way and
are presumed available to all normal classes of consumers
of such services. While there are no restrictions on
channels of trade or classes of consumers for applicant's
goods, it is generally known and not subject to reasonable
dispute that the gaming and casino industry is highly
regulated and that applicant's goods, even without any
restriction included in the identification, can be
considered as generally targeted only to business
purchasers in the gaming and casino industry. Thus, the
involved goods and services are not competitive and do not
share channels of trade. Nonetheless, the Board's focus is
not solely on purchaser confusion, but must also encompass
likely confusion among ultimate users of applicant's
machines and registrant's services.
Applicant's goods, as discussed above, would be
marketed to purveyors of casino services. The application
includes applicant's averment that the mark BIG BUCKS BINGO
is intended to be used on the goods. Accordingly, the
Board must consider whether casino patrons who may be
exposed to registrant's mark would, if exposed to
applicant's mark on gaming machines, be mistaken or
confused or deceived. Casino patrons would likely conclude
Ser. No. 75/385,414
6
that the services of registrant and the machines of
applicant have a common source or are otherwise related.
Given the identical nature of the marks (but for
applicant's addition of a disclaimed term), and the overlap
between consumers of registrant's services and ultimate
users of applicant's machines, the Board finds that there
exists a likelihood of confusion, mistake or deception.
Accordingly, the refusal based on the registration no.
1,847,026 for the mark BIG BUCKS for casino services is
affirmed.
Turning to the refusal based on registration no.
1,388,945 for the mark BIG BUCKS SLOTS for "slot machines,"
the identified goods are essentially identical to those of
applicant. The respective goods, since there are no
restrictions in the identifications, are presumed to be
marketed through the same channels of trade to similar, if
not identical, classes of consumers.
In regard to the marks, the Examining Attorney asserts
that BINGO in applicant's mark and SLOTS in registrant's
mark are the subject of disclaimers; that disclaimed matter
typically is less significant; and that the dominant
element in each mark is the common phrase BIG BUCKS.
Moreover, the Examining Attorney relies on oft-cited cases
holding that points of similarity between marks are more
Ser. No. 75/385,414
7
important than points of difference and that when goods are
identical the degree of similarity of marks necessary to
support a finding of likelihood of confusion is less than
when the goods are different.
The Examining Attorney's approach is too formulaic.
Although the Examining Attorney is correct in his assertion
that disclaimed matter typically is less significant and,
therefore, entitled to less weight when marks are compared,
the different disclaimed words are still part of the
respective marks and must be considered. See In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993);
see also, Computer Identics Corporation v. Identicon
Corporation, 182 USPQ 438 (TTAB 1974) (no likelihood of
confusion between IDENTICON and the marks COMPUTER IDENTICS
and COMPUTER IDENTICS CORPORATION, notwithstanding that
"computer" and "corporation" are common descriptive words).
Given the highly suggestive nature of "big bucks," for slot
machines, the presence of an additional word in each mark,
even though each is the subject of a disclaimer, is
significant.
In considering how the respective marks will be
perceived, the Examining Attorney relies on another oft-
cited premise, i.e., that the Board's focus should be on
the average purchaser who normally retains a general rather
Ser. No. 75/385,414
8
than a specific impression of trademarks. We find it
significant, however, that the average purchaser of slot
machines and gaming devices would be a sophisticated
business purchaser. Thus, while it has been held that even
sophisticated purchasers are not necessarily immune to
source confusion, business purchasers operating in the
context of a heavily regulated industry are likely to be
discriminating in their purchases of slot machines used in
casinos or other gaming establishments. Such purchasers
are less likely to rely on highly suggestive marks to
differentiate one source of slot machines from another.
The Board finds the duPont factor focusing on
sophistication of purchasers dispositive in regard to the
refusal of registration based on registration no.
1,388,945, which is, therefore, reversed.5
5 In regard to this refusal, the possibility that ultimate users
of the two different brands of slot machines might be confused
does not dictate a different result because, for items sold to
businesses, potential confusion among ultimate users who would
not influence future purchases of the goods does not support a
finding of likelihood of confusion. See Electronic Design &
Sales, Inc. v. Electronic Data Systems Corp., 954 F.2d 713, 21
USPQ2d 1388, 1392.
Ser. No. 75/385,414
9
Hanak, Administrative Trademark Judge, concurring in part,
dissenting in part:
I agree with Judge Rogers’ conclusion that there is no
likelihood of confusion resulting from the contemporaneous
use of applicant’s mark BIG BUCKS BINGO and registrant’s
mark BIG BUCKS SLOTS for identical goods, namely, slot
machines. Judge Rogers correctly notes that the purchasers
of slot machines (casino operators and owners) are
sophisticated and are not “likely to rely on highly
suggestive marks to differentiate one source of slot
machines from another.” (Rogers opinion page 8). I would
only add that as applied to slot machines, the term “big
bucks” is extremely highly suggestive in that this term is
defined as meaning “a large amount of money.” The Random
House Dictionary of the English Language (2d ed. 1987).
Thus, as applied to slot machines, the term “big bucks”
would immediately inform purchasers or users of the
machines that said machines offer large payoffs to winners.
However, I respectfully disagree with Judge Rogers’
conclusion that there exists a likelihood of confusion
resulting from the contemporaneous use of applicant’s mark
BIG BUCKS BINGO for slot machines and registrant’s mark BIG
BUCKS for casino services. At the outset, I find that the
term “big bucks” is likewise extremely highly suggestive
Ser. No. 75/385,414
10
when used for casino services in that it immediately
informs individuals that the payoffs involve large sums of
money. Thus, the only element common to these two marks is
the extremely highly suggestive term “big bucks.” It has
been repeatedly held that “the mere presence of a common,
highly suggestive portion [in two marks] is usually
insufficient to support a finding of likelihood of
confusion.” Tektronix, Inc. v. Daktronics, Inc., 534 F.2d
915, 189 USPQ 693, 694 (CCPA 1976) and cases cited therein.
As cogently explained by Judge Rogers, ordinary
consumers do not purchase slot machines. Thus, the only
common purchasers of both slot machines and casino services
are casino operators and owners who, perhaps on occasion,
make personal wagers in casinos. However, when casino
operators and owners make personal wagers in casinos, they
do not lose their sophistication. Hence, because the only
common purchasers of both slot machines and casino services
are very sophisticated casino operators and owners, I would
find that there exists no likelihood of confusion resulting
from the contemporaneous use of the extremely highly
suggestive marks BIG BUCKS BINGO for slot machines and BIG
BUCKS for casino services.
Judge Rogers does not contend that sophisticated
casino operators and owners would be confused as a result
Ser. No. 75/385,414
11
of the contemporaneous use of the foregoing two marks on
their respective goods and services. Rather, Judge Rogers
notes that “the Board’s focus is not solely on purchaser
confusion, but must also encompass likely confusion among
ultimate users of applicant’s [slot] machines and
registrant’s [casino] services.” (Rogers opinion page 5).
Judge Rogers correctly notes that the applicant has stated
that its mark BIG BUCKS BINGO is intended to be used on its
slot machines. However, there is nothing in the record to
indicate that this use will be in a manner prominent enough
such that the ultimate users of applicant’s slot machines
will ever see applicant’s mark BIG BUCKS BINGO. A more
likely scenario is that applicant’s mark BIG BUCKS BINGO
will be displayed on applicant’s slot machines in a
subordinate manner such that it could be seen only by the
purchasers of the slot machines (sophisticated casino
operators and owners) and not by the users of the slot
machines (ordinary gamblers).
I make the foregoing presumption on the following
basis. The owner of both cited registrations is Bally
Manufacturing Corporation. Based upon the fact that Bally
owns registrations for both slot machines and casino
services, it appears that Bally not only manufactures slot
machines which it then sells to other casinos, but also
Ser. No. 75/385,414
12
operates its own casinos. While other casinos may be
willing to purchase Bally’s BIG BUCKS SLOTS slot machines,
I seriously doubt that these other casinos would wish to
have Bally’s mark BIG BUCKS SLOTS prominently displayed on
the slot machines such that it is visible to the customers
of these other casinos. If such were the case, then these
other casinos would, in essence, be potentially advertising
and promoting Bally’s competing BIG BUCKS casino services.
Ser. No. 75/385,414
13
Hohein, Administrative Trademark Judge, concurring in part
and dissenting in part:
I concur with Judge Rogers’ conclusion that there is a
likelihood of confusion from contemporaneous use of
applicant’s mark BIG BUCKS BINGO for slot machines and
gaming devices, namely, gaming machines, and registrant’s
mark BIG BUCKS for casino services, namely, operation of
gaming machines. While I disagree with the overly broad
proposition advanced by Judge Rogers that, "were there
another term in the cited mark unlike any term in
applicant's mark, this might have contributed to a finding
of overall dissimilarity of the marks," I agree with his
finding that, under the circumstances in this case, "the
marks are identical, but for applicant's addition of a
disclaimed term."
In particular, as to the overall commercial impression
engendered by each of the respective marks, I find that, as
applied to applicant's slot machines and gaming machines,
the presence in its BIG BUCKS BINGO mark of the generic
term BINGO, which the Random House Dictionary of the
English Language (2d ed. 1987) at 209 defines as "a form of
lotto in which balls or slips, each with a number and one
of the letters B, I, N, G, or O, are drawn at random and
players cover the corresponding numbers printed on their
Ser. No. 75/385,414
14
cards, the winner being the first to cover five numbers in
any row or diagonal or, sometimes, all numbers on the
card," adds nothing of significance to distinguish such
mark from registrant's BIG BUCKS mark for casino services.
Moreover, while I agree with Judge Hanak to the extent that
the term BIG BUCKS in the marks at issue is highly
suggestive as applied to the respective goods and services,
the marks as a whole nevertheless have the identical
connotation and, as previously noted, project the same
commercial impression.
Furthermore, as Judge Rogers correctly points out, in
determining whether there is a likelihood of confusion,
"the Board's focus is not solely on purchaser confusion,
but must also encompass likely confusion among ultimate
users of applicant's machines and registrant's services."
Although I do not disagree with Judge Hanak's view that,
because the cited registrant is also the owner of the other
cited registration for the mark BIG BUCKS SLOTS for slot
machines, third-party purchasers of applicant's slot
machines and those sold by registrant would not be desirous
of "potentially advertising and promoting Bally's competing
BIG BUCKS casino services" through the prominent display on
their slot machines of the marks BIG BUCKS BINGO and BIG
BUCKS SLOTS, I find nothing in Section 2(d) of the
Ser. No. 75/385,414
15
Trademark Act which should so limit the scope of protection
afforded a registration. If anything, the owner of more
than one registration for the same or essentially the same
mark for related goods and/or services often enjoys a wider
latitude of protection than if it owned only a single
registration.1
Here, while Judge Hanak maintains that there is
nothing in the record which suggests that either applicant
or registrant will use their respective slot machine marks
in a manner prominent enough that the ultimate users of
such goods will see the marks, I can find no reason not to
assume that such marks will be prominently displayed. To
the contrary, marks for slot machines would typically be
displayed in a highly visible manner as a means of inducing
or attracting the ultimate users of the goods (ordinary
gamblers) to play the machines and, on the facts of this
case, to win a large amount of money. Certainly, there is
nothing in applicant's application to restrict its possible
manner of use of its mark nor, when separately considered
as the cited registrations must be, is there any limitation
as to the ways in which registrant may utilize either its
1 Although not present in this case, the owner of a family of
registered marks (see, e.g., J & J Snack Foods Corp. v.
McDonald's Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed. Cir. 1991)
is one example.
Ser. No. 75/385,414
16
BIG BUCKS SLOTS mark for slot machines or its BIG BUCKS
mark for casino services. Consequently, I concur with
Judge Rogers' conclusion that consumers familiar with
registrant's use of its BIG BUCKS mark for casino services
involving the operation of gaming machines would be likely,
as the principal users of gaming machines, including slot
machines, to be confused as to the source or sponsorship of
such closely related services and goods upon encountering
applicant's use of its BIG BUCKS BINGO mark in connection
with slot machines and gaming machines.
I would also find, however, that in light of the above
comments, there is a likelihood of confusion from the
contemporaneous use of the marks BIG BUCKS BINGO and BIG
BUCKS SLOTS in connection with slot machines. While, in
particular, the actual purchasers of such goods typically
are casino operators and owners and, thus, they would
indeed be highly sophisticated and discriminating buyers
who would be expected to exercise a degree of care in their
selections, the same simply cannot be said for the users of
such goods, who as previously noted are overwhelmingly
ordinary gamblers.2 To those in the latter class, it is
2 Notably, neither Judge Rogers nor Judge Hanak have adequately
explained why the ultimate users of slot machines would not be
likely to be confused as to the origin or affiliation of such
goods when offered under the marks at issue. Specifically, Judge
Rogers' justification, with which Judge Hanak concurs, for
Ser. No. 75/385,414
17
simply not too formalistic an approach to believe, as the
Examining Attorney contends, that as applied to identical
goods, the dominant and hence source-distinguishing element
in each of the respective marks is the term BIG BUCKS,
notwithstanding the highly suggestive connotation thereof.
In particular, just as the generic word BINGO in
applicant's BIG BUCKS BINGO mark imparts nothing of
trademark significance thereto, the word SLOTS in
reversing the Examining Attorney simply states, among other
things, that "the possibility that ultimate users of the two
different brands of slot machines might be confused does not
dictate a different result because, for items sold to businesses,
potential confusion among ultimate users who would not influence
future purchases of the goods does not support a finding of
likelihood of confusion," citing Electronic Design & Sales, Inc.
v. Electronic Data Systems Corp., supra. This case, however,
involves in my estimation a high probability--rather than a mere
"possibility"--of confusion among the ordinary gamblers who
constitute the ultimate users of the goods. As this Board has
noted in, for example, In re Artic Electronics Co., Ltd., 220
USPQ 836, 838 (TTAB 1983):
We concur entirely with the contentions of the
Examining Attorney that in addition to source
confusion among buyers, source confusion among
ultimate users of the goods before us ... is both
likely and encompassed within the confusion
proscriptions of Section 2(d). The notion that
likelihood of confusion is limited to purchaser
confusion is simply not correct. The 1962 amendments
to the Trademark Act, both in its sections relating to
standards for refusal of registration and for
trademark infringement, explicitly deleted the
qualifying term "purchasers" after referring to marks
likely "to cause confusion, or to cause mistake or to
deceive," thereby evincing an intention to remove any
limitation of such standards to purchasers of goods.
.... We conclude, therefore, that a likelihood of
confusion among users ... as to the source of such
equipment is fully capable of supporting a denial of
registration under Section 2(d) of the Trademark Act.
Ser. No. 75/385,414
18
registrant's BIG BUCKS SLOTS mark is likewise generic and
without trademark significance since, as set forth in
Random House Dictionary of the English Language (2d ed.
1987) at 1800, the term SLOT is defined in relevant part as
"Informal. See slot machine".
Inasmuch as I find, in view thereof, that when
considered in their entireties, the marks BIG BUCKS BINGO
and BIG BUCKS SLOTS engender essentially the same
commercial impression when used in connection with slot
machines, I would affirm the additional ground of refusal
on the basis that ordinary gamblers, as the ultimate users
of the goods, would be likely, when acquainted with
registrant's BIG BUCKS SLOTS mark for slot machines, to be
confused as to source or sponsorship upon encountering slot
machines bearing applicant's virtually identical BIG BUCKS
BINGO mark for the same type of goods.