PGB Partnership

Trademark Trial and Appeal Board

Sep 13, 2000

No. 75438587 (T.T.A.B. Sep. 13, 2000)

Paper No.
9
GDH/gdh
9/13/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re PGB Partnership
________
Serial No. 75/438,587
_______
Daniel P. Burke of Galgano & Burke for PGB Partnership.
D. Beryl Gardner, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
_______
Before Quinn, Hohein and Holtzman, Administrative Trademark
Judges.
Opinion by Hohein, Administrative Trademark Judge:
PGB Partnership has filed an application to register
the mark "PLAYERS CHOICE 21" for "casino game tables for card
games of chance used exclusively in commercial gaming
establishments."1

1 Ser. No. 75/438,587, filed on February 23, 1998, which alleges a
bona fide intention to use the mark in commerce. The term "21" is
disclaimed.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser. No. 75/438,587
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant's mark, when applied to its goods, so resembles
the mark "PLAYERS CHOICE POKER," which is registered for
"poker-type card games,"2 as to be likely to cause confusion,
mistake or deception.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested. We affirm the refusal to
register.
Preliminarily, we note that in any likelihood of
confusion analysis, two key considerations are the similarity
or dissimilarity of the goods and the similarity or
dissimilarity of the marks. See, e.g., Federated Foods, Inc.
v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976).3 Turning first to consideration of the respective
goods, it is well settled that that the issue of likelihood of
confusion must be determined on the basis of the goods as they
are set forth in the involved application and cited
registration. See, e.g., CBS Inc. v. Morrow, 708 F.2d 1579,
218 USPQ 198, 199 (Fed. Cir. 1983); Squirtco v. Tomy Corp.,

2 Reg. No. 2,129,556, issued on January 13, 1998, which sets forth
dates of first use of July 5, 1997. The word "POKER" is disclaimed.
3 The court, in particular, pointed out that: "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."
Ser. No. 75/438,587
3
697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983); and Paula
Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973). Thus, where the goods in
the application at issue and in the cited registration are
broadly described as to their nature and type, it is presumed
in each instance that in scope the application and
registration encompass not only all goods of the nature and
type described therein, but that the identified goods move in
all channels of trade which would be normal for such goods and
that they would be purchased by all potential buyers thereof.
See, e.g., In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Furthermore, it is well established that goods need
not be identical or even competitive in nature in order to
support a finding of likelihood of confusion. Instead, it is
sufficient that the goods are related in some manner and/or
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons under situations that would give rise, because of the
marks employed in connection therewith, to the mistaken belief
that they originate from or are in some way associated with
the same producer or provider. See, e.g., Monsanto Co. v.
Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978) and In re

Ser. No. 75/438,587
4
International Telephone & Telegraph Corp., 197 USPQ 910, 911
(TTAB 1978).
Here, as the Examining Attorney points out in his
brief, the "registrant has not limited the channels of trade
through which its goods travel by excluding use in commercial
gaming establishments." Thus, notwithstanding that
applicant's goods are identified as "casino game tables for
card games of chance used exclusively in commercial gaming
establishments," the lack of any restrictions in the
identification of registrant's "poker-type card games" means
that, like applicant's goods, they may be used in commercial
gaming establishments and, it would appear, registrant's goods
could even be played on or utilized with applicant's goods.
In addition, not only has applicant not even
questioned in its appeal brief that, as contended by the
Examining Attorney, the respective goods are closely related,
but the record contains several use-based third-party
registrations of marks which are registered for "casino gaming
tables and casino card games," "card games, [and] gaming
tables," and "card games and gaming tables for use therewith."
Although such registrations are admittedly not evidence that
the different marks shown therein are in use or that the
public is familiar with them, they nevertheless have some
probative value to the extent that they serve to suggest that
Ser. No. 75/438,587
5
the goods listed therein are of a kind which may emanate from
a single source. See, e.g., In re Albert Trostel & Sons Co.,
29 USPQ2d 1783, 1785-86 (TTAB 1993) and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6.
Clearly, therefore, both registrant's and applicant's goods
would be sold through the same channels of trade for use in
the same kinds of commercial gaming establishments.
Accordingly, there is no real question that the respective
goods, while specifically different, are so closely related
that, if marketed or sold under the same or substantially
similar marks, confusion as to their source or sponsorship
would be likely to occur.
Turning, therefore, to consideration of the marks at
issue, applicant argues that, notwithstanding the presence in
both marks of the words "PLAYERS CHOICE," its "PLAYERS CHOICE
21" mark "presents an entirely different appearance, sound and
connotation" from registrant's "PLAYERS CHOICE POKER" mark
when the marks are considered in their entireties. In this
respect, applicant further asserts that, as shown by the
information of record concerning various third-party
registrations, "[t]he casino and recreational game fields, in
general, are diluted with marks containing 'PLAYERS CHOICE,'
including variations thereof" and that, in view thereof,
Ser. No. 75/438,587
6
"excluding Applicant's mark [from registration] is
inconsistent and unfair."
The Examining Attorney, on the other hand, contends
that "applicant's mark is not dissimilar to the registrant's
mark," arguing that both marks begin with the words "PLAYERS
CHOICE" and that:
The term POKER, which follows the first two
terms of the registrant's mark is
descriptive and has been disclaimed. The
term 21, which follows the first two terms
in the applicant's mark is descriptive and
has been disclaimed. The significant
element of both marks is the term "PLAYERS
CHOICE." Use of such descriptive words as
POKER and 21 does not serve to distinguish
between these marks. For that reason, the
consumer may be misled to believe that the
registrant now provides casino game tables
in commercial gaming establishments for its
poker-type card games, such as twenty-one.
Here, confusion as to source is likely
because the applicant's mark ... looks,
sounds and has a similar meaning to the
registrant's mark ... for goods in the same
field.
As to the various third-party registrations for marks which
consist of or contain the word "PLAYERS CHOICE" or variants
thereof, the Examining Attorney accurately points out, in our
view, that none of such registrations covers goods which are
as closely related to applicant's goods as are the goods in
the cited registration.
We agree with the Examining Attorney that, when
considered in their entireties, the marks "PLAYERS CHOICE 21"
Ser. No. 75/438,587
7
and "PLAYERS CHOICE POKER" are substantially similar in sound
and appearance. While concededly the term "21" is not
identical or even similar in connotation to the term "POKER,"4
both marks overall are nevertheless substantially similar in
structure in that each begins with the words "PLAYERS CHOICE"
followed by the generic name of a card game of chance. When
applied to the respective goods, it is obvious that the terms
"21" and "POKER," as confirmed by the disclaimers thereof, are
descriptive of applicant's and registrant's goods and, since
they are thus devoid of source-indicative significance, cannot
serve to distinguish the marks at issue.
Applicant's contention, however, that such an
analysis improperly dissects the marks is without merit.
While, as noted above, the respective marks must be compared
in their entireties, it is nevertheless the case that, in
articulating reasons for reaching a conclusion on the issue of
likelihood of confusion, "there is nothing improper in stating
that, for rational reasons, more or less weight has been given
to a particular feature of a mark, provided [that] the
ultimate conclusion rests on consideration of the marks in

4 According to the excerpt of record from The American Heritage
Dictionary of the English Language (3rd ed. 1992), the term "21" is a
synonym for the word "blackjack," which in pertinent part is defined
as a noun meaning "3. Games. A card game in which the object is to
accumulate cards with a higher count than that of the dealer but not
exceeding 21. In this sense, also called twenty-one ...."
Ser. No. 75/438,587
8
their entireties." In re National Data Corp., 753 F.3d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). For instance, "that a
particular feature is descriptive or generic with respect to
the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark ...."
224 USPQ at 751. Here, because the dominant and
distinguishing elements of the respective marks, due to the
descriptiveness of the terms "21" and "POKER," are the
identical words "PLAYERS CHOICE," the marks "PLAYERS CHOICE
21" for blackjack and other game tables used exclusively in
commercial gaming establishments and "PLAYERS CHOICE POKER"
for poker-type card games engender, as a whole, essentially
the same commercial impression.
Accordingly, we conclude that purchasers and
prospective customers, familiar with registrant's "PLAYERS
CHOICE POKER" mark for "poker-type card games," would be
likely to believe, upon encountering applicant's substantially
similar "PLAYERS CHOICE 21" mark for "casino game tables for
card games of chance used exclusively in commercial gaming
establishments," that such closely related goods emanate from,
or are otherwise sponsored by or affiliated with, the same
source. Moreover, even if such consumers were to notice the
differences in the marks, in that registrant's mark relates to
a poker-type product while applicant's mark refers to
Ser. No. 75/438,587
9
blackjack (i.e., 21) gaming tables, they would still be likely
to view applicant's "PLAYERS CHOICE 21" goods as a new product
line from the same source as the producers of registrant's
"PLAYERS CHOICE POKER" products.
Decision: The refusal under Section 2(d) is
affirmed.
T. J. Quinn
G. D. Hohein
T. E. Holtzman
Administrative Trademark
Judges,
Trademark Trial and Appeal
Board