Eolith Co., Ltd.

Trademark Trial and Appeal Board

Feb 9, 2007

No. 78139104 (T.T.A.B. Feb. 9, 2007)

Mailed:
February 9, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Eolith Co., Ltd.
________

Serial No. 78139104
_______

James H. Walters of Dellett & Walters for Eolith Co., Ltd.

Tricia Sonneborn, Trademark Examining Attorney, Law Office
110 (Chris A.F. Pedersen, Managing Attorney).
_______

Before Quinn, Walters and Grendel, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Eolith Co., Ltd. seeks registration on the Principal
Register of the mark EL DORADO, in standard character form,
for “computer electronic games; automatic slot machines,”
in International Class 9.1

1 Serial No. 78139104, filed June 26, 2002. The application is
based on use of the mark in commerce under Trademark Act Section
1(a), 15 U.S.C. §1051(a), alleging first use as of June 13, 2001,
and use in commerce as of February 21, 2002. As filed, the
application also included goods in International Class 28 for
which a bona fide intention to use the mark was alleged; although
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78139104
2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the specimens of record do not show use of
the mark in connection with the goods specified in the
application. See Trademark Rule 2.56(a), 37 C.F.R.
§2.56(a). The appeal is fully briefed. After careful
consideration of the evidence and arguments of record, we
reverse.
The application included a specimen for the goods in
International Class 9, shown below, described as “a
photograph of one of the goods with the mark thereon.”

applicant subsequently deleted the International Class 28 goods
from the application following a Section 2(d) refusal in relation
thereto. Applicant also limited the goods in International Class
9 to those identified herein.

Ser. No. 78139104
3
In her June 25, 2003, non-final office action, the
examining attorney contended that the specimen of record
does not show use of the mark in connection with the goods
identified in International Class 9; rather, the examining
attorney stated that the specimen shows use of the mark on
an arcade game. Applicant disagreed in its response of
December 24, 2003, and, in support of its position that the
specimen shows use of the mark on the identified goods,
applicant submitted a definition of “slot machine” from
Webster’s Third New International Dictionary of the English
Language Unabridged (1981) as “(1) a machine (as a vending
machine) whose operation is started by dropping a coin into
a slot (2) a coin-operated gambling machine that pays off
according to the matching of symbols on wheels spun by a
handle – called also a one-armed bandit.” Applicant made
the following argument:
The device shown [in the specimen] is computer
software driven and therefore should qualify as a
computer game program. The program is sold as an
integral part of the goods. Further, the
automatic slot machine designation is believed to
apply to the illustrated goods. The device shown
operates with coins and employs a mound of coin-
like medals that the player rakes off of the
central pile of medals to win prizes.

The examining attorney issued a final refusal to
register on the ground that the specimen does not show use
Ser. No. 78139104
4
of the mark for the specified goods and made the following
statement:
Here, the specimen does not show use of the mark
on “computer electronic game programs” or
“automatic slot machines.” It shows use on a
stand-alone arcade type game in Class 028. The
applicant submits that “the device shown is
computer software driven and therefore should
qualify as a computer game program.” However,
given the number of goods today that contain
computer software, this is not a practical
reality, nor is it acceptable for classification
purposes. Using this flawed reasoning, the
examining attorney could then accept a picture of
a computer for computer electronic game programs.

In its request for reconsideration, applicant argued
that its original specimen is acceptable and submitted the
following three additional specimens, supported by the
required declaration: (1) an instruction manual for the
machine depicted in the original specimen, (2) photographs
of a circuit board with the mark EL DORADO stamped thereon,
and (3) an alleged display associated with the goods that
depicts the machine shown in the original specimen, refers
to El Dorado as “a new type medal prize game,” includes
simple instructions for operating the game machine, and
describes the characteristics of the game.
The examining attorney denied the request for
reconsideration, making the following statement2:

2 The examining attorney attached a picture of a third party’s
slot machine that would be characterized as a “one-armed bandit.”
Ser. No. 78139104
5
Applicant submitted three different specimens in
its request for reconsideration. The specimens
submitted are unacceptable because they do not
show use on the goods. Rather, they show use for
circuit boards and an arcade game. They do not
show use for a slot machine, see picture of a
slot machine attached hereto.
The first specimen is an instruction manual,
which states “Thank you very much for purchasing
our product ‘El Dorado,’ despite the recent
economic recession sweeping the arcade game
market” (emphasis added).
The second specimen is “a photograph of the
boards in which the computer programs are carried
and stored.” This does not show use on the
labeling or packaging for the computer game
programs but, rather, for use on circuit boards.
The third specimen is a display associated with
the goods, but does not show the goods in
relation to the display.
In her brief, the examining attorney argues that
accepting applicant’s argument that the displayed product is
a slot machine would require the USPTO to accept “slot
machine,” in International Class 9, as an identification for
any machine that operates via a coin slot, noting several
coin operated machines that are quite different from the
goods herein and from the slot machines referred to as “one-
armed bandits,” for example, “coin operated washing
machines,” in International Class 7, “coin operated public
telephones,” in international Class 9, and “coin operated
vibrating beds,” in International Class 20. The examining
attorney contends that the goods identified by the specimens
Ser. No. 78139104
6
of record are most appropriately identified as “arcade
games,” in International Class 28. The examining attorney
also submitted three additional dictionary definitions of
“slot machine,”3 two of which have been considered and are
shown below:
Bartleby.com: American Heritage Dictionary of the
English Language, 4th ed. 2000. “1. a gambling
machine operated by inserting coins into a slot
and often by pulling down on a long handle. 2.
A vending machine operated by inserting coins
into a slot.”

Encarta.msn.com4: Encarta World English
Dictionary, 2006. “1. gambling machine: a
gambling machine in which a player inserts coins
or bills in a slot and pulls a lever that spins
symbols on a dial to generate combinations that
determine winnings; 2. vending machine: a coin
operated vending machine.

3 Ordinarily, we would not consider these definitions because
they were submitted with the examining attorney’s brief and are
untimely. However, applicant did not object to their
consideration. Therefore, we exercise our discretion and take
judicial notice of the definitions from the Encarta and Bartlesby
websites. See, e.g., Hancock v. American Steel and Wire Co. of
New Jersey, 203 F.2d 737, 97 USPQ 330, 332 (CCPA 1953) and
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). We have not considered the definition
from the Wordsmyth website as there is no indication that it is
available in any form other than from the Internet website. In
re Total Quality Group Inc., 51 USPQ2d 1474, 1476 (TTAB 1999)
(Board will not take judicial notice of online dictionaries
submitted with brief that otherwise do not exist in printed
format).

4 Regarding the Encarta Dictionary, “while it may not be
available as a print publication, it is a widely-known reference
that is readily available in specifically denoted editions via
the Internet and CD-Rom. Thus, it is the electronic equivalent of
a print publication and applicant may easily verify the excerpt.”
In re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
Ser. No. 78139104
7
The question before us in this case is whether the
specimens of record show use of the mark EL DORADO in
connection with “computer electronic games” and/or “automatic
slot machines.” First, we agree with the examining attorney
and find that the photograph of a circuit board with EL
DORADO imprinted thereon is not a good specimen of use for
the goods as identified; rather, it shows use of the mark on
circuit boards.
The remaining specimens – a photograph of the product,
an owner’s manual therefore, and an alleged display
associated with the product – all pertain to the same
product. Thus, before we consider the acceptability of these
three specimens, we must answer the threshold question of
whether this product fits within the identification of goods
in the application.
In addition to considering the definitions noted above,
we take judicial notice of the following definitions in
Merriam Webster’s Collegiate Dictionary, 11th ed. 2003:
“slot machine” is defined as, inter alia, “a
machine whose operation is begun by dropping a
coin into a slot”;
“vending machine” is defined as “a coin operated
machine for selling merchandise”;
Ser. No. 78139104
8
“computer” is defined as “a programmable
usu[ally] electronic device that can store,
retrieve and process data”;
“electronic” is defined as, inter alia,
“implemented on or by means of a computer”; and
“game” is defined as, inter alia, “activity
engaged in for diversion or amusement.”
We also take judicial notice of the definition of “slot
machine” from the website Dictionary.com, based on Random
House Unabridged Dictionary, Random House, Inc. 2006: “1. a
gambling machine operated by inserting coins into a slot and
pulling a handle that activates a set of spinning symbols on
wheels, the final alignment of which determines the payoff
that is released into a receptacle at the bottom, 2. any
machine operated by inserting coins into a slot, as a vending
machine.”
The owner’s manual gives us further insight into the
nature of the product pictured in the original specimen. On
p. 16 of applicant’s August 5, 2004, submission, the manual
pictures the product, characterizes it as “a machine,” and
names each of its parts, including LED timer, LED coin slot,
and joy stick. Further, it is clear from the manual that the
machine is marketed to “game centers,” and is referred to as
an “arcade game.” The manual (at p. 12 of applicant’s
submission) describes the game as follows: “El Dorado is a
Ser. No. 78139104
9
unique game in which users can control cranes built in the
machine to scratch down medals. If users scratch off all the
medals needed, they are given gifts.” The specimen
identified by applicant as a display associated with the
goods appears to be a brochure and reinforces this
characterization of the product.
The machine pictured in the original specimen and
pictured and described in the owner’s manual and display is
clearly not a “computer electronic game.” While this machine
has some electronic components and may include some computer
software, its operation by gamers appears to be primarily
mechanical in nature. While it is certainly a game, and it
has electronic components such as the LED timer and LED coin
slot, it is neither a “computer” nor a “computer electronic
game.”
Additionally, the machine pictured may be an arcade
game, but, since “arcade game” is not among the goods
identified in the application, the question before us is
whether the pictured and described machine may also be
correctly identified as an “automatic slot machine.”
Clearly, it is not the “one-armed bandit” type of slot
machine described in each dictionary entry of record.
Ser. No. 78139104
10
The two dictionary definitions submitted by the
examining attorney restrict “slot machines” that are not one-
armed-bandits to “vending machines” that are coin operated.
The dictionary definition submitted by applicant and the two
judicially noticed definitions define “slot machines” more
broadly as encompassing all machines operated by dropping a
coin into a slot. Applicant’s machine is not a “vending
machine” because, while a gamer may win a “gift,” it is not a
machine that dispenses goods upon placing the appropriate
coinage in the slot – it is a game.
The majority of definitions herein do not restrict “slot
machines” to only “vending machines,” and the machine
pictured in the specimen fits the broad definition of a slot
machine.5 Therefore, we conclude that the specimen
originally submitted, i.e., a picture of the product with the
mark affixed thereto, is sufficient evidence of use of the
mark for the identified goods, i.e., “automatic slot
machines.” It is unnecessary to consider the manual and

5 The examining attorney argues that “the Trademark Office does
not use broad definitions to identify products but, rather, uses
the common understanding of words taken from a dictionary if
necessary” (brief unnumbered p. 4); and that accepting the
designation “slot machine” for the product shown will essentially
eviscerate the Trademark Acceptable Identification of Goods and
Services Manual. We do not find these arguments either accurate
or persuasive based on the record in this case.
Ser. No. 78139104
11
alleged display subsequently submitted except as literature
indicating the nature of the goods.
Decision: The refusal to register is reversed.