Aruze Corporation

Trademark Trial and Appeal Board

Dec 1, 2008

No. 77053890 (T.T.A.B. Dec. 1, 2008)

Mailed:
December 1, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Aruze Corporation
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Serial No. 77053890
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Nate A. Garhart of Coblentz, Patch, Duffy & Bass LLP for
Aruze Corporation.

Brian Pino, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Hairston, Bergsman and Ritchie, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Aruze Corporation (“applicant”) filed an intent-to-use
application to register the mark RAISE DRAW JOKER’S WILD,
shown below, for goods ultimately identified as follows:
Video poker machines and replacement
parts therefor; slot machines and
replacement parts therefor; video slot
machine and replacement parts therefor;
gaming machines and replacement parts
therefor; video gaming machines and
replacement parts therefor; media
storage computer software and computer
software for controlling slot machines
or game machines and computer software
for game machines or slot machines, in
Class 9. (Emphasis added).
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77053890
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During the prosecution of the application, the
Trademark Examining Attorney required applicant to disclaim
the exclusive right to use the term “Joker’s Wild” on the
ground that it is merely descriptive (i.e., “the wording
immediately tells customers that applicant offers goods
and/or services that offer games in which the jokers are
wild”). Accordingly, applicant disclaimed the exclusive
right to use the term “Joker’s Wild.”
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark is likely to cause confusion with the mark JOKERS
WILD, in typed drawing format, for “Gaming machines, namely
slot machines with or without video output,” in Class 9.1
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

1 Registration No. 2888275, issued September 28, 2004 on the
Principal Register without a claim of acquired distinctiveness.
Serial No. 77053890
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USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”).
A. The similarity or dissimilarity and nature of the
goods described in the application and registration.

Applicant is seeking to register its mark for, among
other things, gaming machines and slot machines. The
description of goods in the cited registration is “gaming
machines, namely slot machines.” Accordingly, the goods are
identical in part. Moreover, the remaining products in
applicant’s description of goods (i.e., video poker
machines, media storage for computer software and software
for slot and game machines) are otherwise related to the
registrant’s products.
Serial No. 77053890
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B. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because the products identified in the application and
the cited registration are in part identical, we must
presume that the channels of trade and classes of
purchasers are the same. See Genesco Inc. v. Martz, 66
USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part identical
and in-part related nature of the parties’ goods, and the
lack of any restrictions in the identifications thereof as
to trade channels and purchasers, these clothing items
could be offered and sold to the same classes of purchasers
through the same channels of trade”); In re Smith and
Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the
goods are legally identical, they must be presumed to
travel in the same channels of trade, and be sold to the
same class of purchasers”).
C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. In a particular case, any one of
these means of comparison may be critical in finding the
Serial No. 77053890
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marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In comparing the marks, we are mindful that
where, as here, the goods are in part identical, the degree
of similarity necessary to find likelihood of confusion
need not be as great as where there is a recognizable
disparity between the goods. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698,
1700 (Fed. Cir. 1992); Real Estate One, Inc. v. Real Estate
100 Enterprises Corporation, 212 USPQ 957, 959 (TTAB 1981);
ECI Division of E-Systems, Inc. v. Environmental
Communications Incorporated, 207 USPQ 443, 449 (TTAB 1980).
In addition, in comparing the marks, the test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result.
San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992). The proper focus is on the recollection of
the average customer, who retains a general rather than a
Serial No. 77053890
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specific impression of the marks. Winnebago Industries,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). In this case, the relevant public
comprises casinos and other consumers who purchase and use
slot machines and gaming machines.
Applicant’s mark and the registered mark are similar
in terms of appearance, sound, meaning and commercial
impression because they share the term “Joker’s Wild”
(i.e., applicant’s mark incorporates the entire registered
mark). Moreover, the manner in which applicant’s mark is
displayed, shown below, with the term “Raise Draw” depicted
above and in larger print than “Joker’s Wild,” makes it
appear as if “Raise Draw” is a variation of the “Joker’s
Wild” line or brand of gaming machines.

Applicant contends that the marks create distinct
commercial impressions because the term “Joker’s Wild” is
merely descriptive, and thus consumers would not look to
that portion of applicant’s mark as a source indicator.
However, despite applicant’s disclaimer of the term, we
find that the term “Joker’s Wild” is suggestive, not merely
Serial No. 77053890
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descriptive. However, even if the evidence of record
convinced us that the term “Joker’s Wild” is merely
descriptive, we must still consider the term “Joker’s Wild”
in our likelihood of confusion analysis because it is part
of the mark. V-M Corporation v. Mayfair Sound Products,
Inc., 480 F.2d 898, 178 USPQ 477 (477-478 (CCPA 1973) (the
disclaimer of part of a mark has no legal significance in
determining likelihood of confusion of the marks in their
entireties); In re Panavision, Inc., 183 USPQ 557, 558
(TTAB 1974) (Board must consider the applicant’s mark in
its entirety, even disclaimed matter). Thus, as indicated
above, we believe that consumers would believe that “Raise
Draw” is a variation of the “Joker’s Wild” line of gaming
machines.
To further support its argument that the term “Joker’s
Wild” is a weak term entitled to only a narrow scope of
protection or exclusivity of use, applicant references
Registration No. 1859277 for the mark JOKERS WILD for
“casino services.” The problem with this argument is two-
fold. First, applicant did not include a copy of the
registration.2 The Trademark Trial and Appeal Board does

2 Applicant first referenced the registration, without submitting
a copy of it, in its request for reconsideration. Although the
Examining Attorney did not object to the registration in his
denial of the request for reconsideration, he did lodge an
objection in his appeal brief. In view of the fact that
Serial No. 77053890
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not take judicial notice of registrations, and the mere
reference to a registration does not make it part of the
record. In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974).
To make registrations of record, soft copies of the
registrations or the complete electronic equivalent (i.e.,
printouts or electronic copies of the registrations taken
from the electronic search records of the USPTO) must be
submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370
(TTAB 1998); In re Volvo Cars of North America Inc., 46
USPQ2d 1455, 1456 n.2 (TTAB 1998); In re Broadway Chicken
Inc., 38 USPQ2d 1559, 1561 n.6 (TTAB 1996); In re Smith &
Mehaffey, 31 USPQ2d 1531, 1532 n.3 (TTAB 1994);
Weyerhaeuser Co. v. Katz, 24 USPQ2d 1230, 1231-32 (TTAB
1992).
Second, even if applicant had properly submitted the
third-party registration into evidence, the third-party
registration would be entitled to only limited probative
value. The registration is not evidence that the mark is
in use. Accordingly, it is not proof that consumers are
familiar with the mark so as to be accustomed to the

applicant does not have an opportunity to respond to the denial
of its request for reconsideration if submitted, as here, at the
end of the allotted six month period, the Examining Attorney did
not waive his objection when he failed to raise it in the denial
of applicant’s request for reconsideration. Moreover, as
discussed below, even if we considered the registration, it would
not change our opinion.
Serial No. 77053890
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existence of the same mark in the marketplace. See Smith
Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004, 177 USPQ
462, 462-463 (CCPA 1973); Richardson-Vicks, Inc. v.
Franklin Mint Corp., 216 USPQ 989, 992 (TTAB 1982). Thus,
applicant’s proffered third-party registration simply
indicates that the U.S. Patent and Trademark Office has
registered one other JOKERS WILD service mark in connection
with casino services. Such evidence fails to establish
that the relevant public has been exposed to third-party
use of similar marks on similar goods or services, such
that consumers would distinguish applicant’s mark from the
mark in the cited registration.
Third-party registrations may be used like dictionary
definitions to show that a term has significance in a
particular field. In this regard, the third-party
registration, as well as the application and the cited
registration, suggest that “Joker’s Wild” means that that
jokers in the game are wildcards. However, even if we were
to conclude that registrant’s mark is entitled to only a
narrow scope of protection, the registered mark is still
entitled to prevent the registration of a highly similar
mark, as in this case, for identical products. See In re
Farah Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277,
278 (CCPA 1971).
Serial No. 77053890
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D. Balancing the factors.

In view of the facts that the marks are similar and
the goods are identical in part, and that we must presume
that the goods move in the same channels of trade and are
sold to the same classes of consumers, we find that
applicant’s registration of the mark RAISEDRAW JOKER’S WILD
and design is likely to cause confusion with the registered
mark JOKERS WILD.
Decision: The refusal to register is affirmed.