Riviera Operating Co.

Trademark Trial and Appeal Board

Feb 5, 2001

No. 75421961 (T.T.A.B. Feb. 5, 2001)

2/5/01
Paper No. 15
TEH
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Riviera Operating Company
________
Serial No. 75/421,961
_______
Stephen M. Sanville of Quirk & Tratos for Riviera Operating
Company.
Howard Smiga, Trademark Examining Attorney, Law Office 102 (Thomas
V. Shaw, Managing Attorney).
_______
Before Seeherman, Hohein and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
Applicant, Riviera Operating Corporation, has appealed from
the final refusal of the Trademark Examining Attorney to register
the mark NICKEL TOWN for "casino services."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 services, so
1 Application Serial No. 75/421,961, filed January 22, 1998, alleging a
date of first use and first use in commerce on December 23, 1997.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/421,961
2
resembles the registered mark NICKEL CITY for "game arcades and
amusement centers" as to be likely to cause confusion."2
When the refusal was made final, applicant appealed.
Briefs have been filed,3 but an oral hearing was not requested.
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).
Applicant argues that the respective services are not
"similar," noting that applicant does not offer arcade services
under its mark and that registrant does not offer, and may not even
be licensed to offer, casino services under its mark.
2 Registration No. 2,084,325; issued July 29, 1997.
3 Applicant has attached three third-party registrations to its reply
brief. Two of such registrations are for ALADDIN marks for casino
services, owned by the same entity, and the other is for ALADDIN'S CASTLE
for amusement center services, owned by a different entity. This
evidence is untimely and has not been considered. See Trademark Rule
2.142(d). Even if we did consider the evidence, it would not affect our
decision in this case. This is because we have no way of knowing what
evidence (such as a consent agreement) was before the Examining Attorney
who approved the application for amusement center services over the
existing registrations for casino services and, in any event, we are not
bound by that determination.
Ser No. 75/421,961
3
It is true that there are specific differences in the casino
services offered by applicant and the arcade and amusement center
services provided by registrant. However, it is not necessary that
the services of the applicant and registrant be similar or
competitive to support a finding of likelihood of confusion. It is
sufficient if the respective services are related in some manner
and/or that the conditions surrounding their marketing are such
that they would be encountered by the same persons under
circumstances that could, because of the similarity of the marks
used thereon, give rise to the mistaken belief that they emanate
from or are associated with, the same source. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). We find that the
respective services are related.
Both applicant and registrant provide entertainment facilities
where people can play coin-operated electronic games.4
Moreover, the eight third-party registrations submitted by the
Examining Attorney show that the same mark has been registered for
4 However, we do not accept, in view of the lack of evidence therefor,
the Examining Attorney's claim that the concept of an "amusement center"
is broad enough to encompass casino services.
Ser No. 75/421,961
4
both casinos and for game arcades.5 Although the third-party
registrations are not evidence of use of the marks in commerce, the
registrations have probative value to the extent that they suggest
that the respective services are of a type which may emanate from
the same source. See, e.g., In re Albert Trostel & Sons Co., supra
and In re Mucky Duck Mustard Co., 6 USPQ2d 1467 (TTAB 1988).
Whether applicant and registrant actually provide each other's
services or whether registrant is even legally authorized to
provide such services is not relevant. The question of likelihood
of confusion is determined, instead, on the basis of the recitation
of services set forth in the application and registration rather
than on what any evidence may show as to the actual nature of the
services. Canadian Imperial Bank of Commerce v. Wells Fargo Bank,
811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987). In fact, customers
would not necessarily be aware of such legal prohibitions, or even
if they were so aware, there is clearly no similar prohibition
against applicant's providing arcade games or other types of non-
gambling entertainment.
5 While applicant claims that these registrations "merely show that
casino operators provide a variety of services," we note that they are
all services which are typically associated with a casino. Applicant
also maintains that "the entire inventory of services and items offered
by a casino, like the entire inventory of products offered at a
department store, are not necessarily related...." This analogy is
flawed because the relevant consideration is not whether all the services
provided by a casino, such as restaurant services and beauty salon
services, are related to each other.
Ser No. 75/421,961
5
Applicant also argues that the services are marketed to
different groups; that registrant markets its arcades as "family
entertainment centers" whereas casinos in general are marketed to
adults, and only adults can avail themselves of the services.
While it is clear that applicant's casino services are restricted
to the general adult population, there is no similar restriction in
the registration as to channels of trade or classes of customers
for registrant's services. We must therefore presume that
registrant's arcades and amusement centers are open to all classes
of customers including applicant's adult customers. See Canadian
Imperial Bank of Commerce, supra. Even assuming registrant's
arcade and amusement centers are family-oriented would not overcome
this presumption. It is clear from the third-party registrations
that parties may offer both casino and arcade services, perhaps for
the very purpose of appealing to entire families. Thus, casinos
and game arcades may be considered very compatible forms of
entertainment.6
We turn then to the marks. Applicant argues that although
each mark contains the "common and suggestive" word NICKEL, the
marks are distinguishable by the terms TOWN and CITY. Applicant
claims that "many users combine the term NICKEL with other terms"
6 Obviously, the arcade games would not be located in the same room as
the casino games. However, the arcade could be located in close
proximity to the casino, if not on the same floor with a separate
entrance, then at least somewhere within the same entertainment facility.
Ser No. 75/421,961
6
to describe a quality or function of the services, namely the cost
to play the games. Applicant has provided a list of such alleged
"uses" in marks such as "Jazzy Nickels" and "Million Nickels," and
notes, in particular, the combination of "Nickel" with different
geographic terms in marks such as "Louisiana Nickels," "Mississippi
Nickels" and "Nevada Nickels." Applicant claims that each of these
terms is being used either in "the provision of casino services" or
"by manufacturers of slot and video poker machines." Applicant
maintains that these "uses" suggest that "consumers are not
confused from use of the common term NICKEL even within the same
industry." 7
The word NICKEL is admittedly suggestive of both applicant’s
and registrant’s services and we agree that the words TOWN and CITY
in the respective marks are different in sound and appearance.
However, marks must be viewed in their entireties and the common
elements of the marks, even if highly suggestive, cannot be ignored
in determining the overall commercial impression the mark conveys.
7 Applicant included this list (from an unidentified source) with its
response to the first Office action. The Examining Attorney did not
object to this evidence or even acknowledge it in her final refusal. We
note that the application was reassigned to another Examining Attorney to
write the appeal brief and that an objection to the form of the evidence
was raised for the first time therein. In addition, the Examining
Attorney acknowledged that the marks are the subjects of third-party
applications and registrations. However, since the previous Examining
Attorney did not raise the objection during the prosecution of the
application, applicant was effectively deprived of the opportunity to
cure any such deficiency before the time of appeal. Thus, the objection
to the evidence must be deemed to be waived, and we have considered the
evidence as properly of record for whatever probative value it may have.
Ser No. 75/421,961
7
In re National Data Corp., 753 F.2d 1056, 1060, 224 USPQ 749, 752
(Fed. Cir. 1985). When considered in this manner, we find that the
marks NICKEL TOWN and NICKEL CITY are substantially similar in
overall meaning and commercial impression. The Examining Attorney
has submitted listings from dictionaries defining "city" as a "[a]
town of significant size and importance" and referring to an
"informal" definition of "town" as "[a] city:," with the example,
"New York is a big town."8 (Emphasis in original). We take
judicial notice of another dictionary which defines "town" as "a
large densely populated urban area: CITY."9 This evidence shows
that CITY and TOWN convey the same general, even interchangeable,
meanings. Thus, when the words CITY and TOWN are each preceded by
the word NICKEL, both marks project a substantially similar overall
image, especially in relation to the entertainment facilities
applicant and registrant provide, of a particular (albeit
8 The American Heritage Dictionary of the English Language, 3rd ed. 1992.
9 Webster's New Collegiate Dictionary, 1979. The Board may properly take
judicial notice of dictionary definitions. See, e.g., University of
Notre Dame du Lac v. J. C. Gourmet Food Imports Co., Inc., 213 USPQ 594
(TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 75/421,961
8
fictitious) geographic place for those services.10 See, e.g.,
Gastown Inc. of Delaware v. Gas City, Ltd., 187 USPQ 760 (TTAB
1975). In view of the substantially similar meanings conveyed by
these marks, we believe that the differences in sound and
appearance are not sufficient to avoid confusion.
Contrary to applicant's claim, and as we noted earlier, the
third-party registrations and applications are not evidence of the
use of any of the marks therein. Third-party registrations can be
used in the manner of a dictionary definition to show that a term
contained therein has a suggestive or commonly understood meaning
in a particular field. See Conde Nast Publications Inc. v. Miss
Quality, Inc., 180 USPQ 149 (TTAB 1973), aff'd, 184 USPQ 422 (CCPA
1975). The suggestive meaning of NICKEL in this case, even without
the third-party registrations, is clear and undisputed. Even if
applicant had properly established use of those marks, they would
not be persuasive on the question of likelihood of confusion
between these marks. None of the marks in applicant's list has the
same format (where NICKEL is followed by a geographic term) or
10 Applicant's reliance on Sure-Fit Products Company v. Saltzson Drapery
Company, 254 F.2d 158, 117 USPQ 295 (CCPA 1958) is misplaced. Each case
must be determined on its own facts, and the facts in that case are
distinguishable. The Court in that case did find that the marks SURE-FIT
and RITE-FIT, although similar in meaning, were so distinct in sound and
appearance as to overcome such similarity in meaning. However, in
reaching its decision, the Court was "most strongly influenced" by the
finding that SURE-FIT and RITE-FIT "are the weakest possible type of
mark." Supra at 296. That is clearly not the case here.
Ser No. 75/421,961
9
conveys the same commercial impression as the marks in this case,
NICKEL TOWN and NICKEL CITY.11
We must also remember that the average purchaser is not
infallible in his recollection of trademarks and often retains only
a general overall impression of marks that he may previously have
seen in the marketplace. In re Mucky Duck Mustard Co. Inc., supra.
The differences in these marks are so slight that they are not
likely to be noted or remembered by purchasers. This is
particularly true when we consider that the customers of arcades
and casinos, and particularly nickel slots, are ordinary adult
members of the general public who, for the most part, are not
necessarily sophisticated and who, especially considering the
inexpensive nature of these games, would therefore not be expected
to exercise a high degree of care and thus would be more prone to
confusion.
Finally, to the extent that there is any doubt on the issue
of likelihood of confusion, it is settled that such doubt must be
resolved in favor of the prior registrant. In re Shell Oil Co.,
992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993).
Decision: The refusal to register is affirmed.
11 This case is distinguishable from In re Broadway Chicken Inc., 38
USPQ2d 1559 (TTAB 1996), on which applicant relies. In that case, the
Board was persuaded that there was no likelihood of confusion by
applicant's evidence of widespread third-party use of the term "Broadway"
in the particular field. As noted above, there is no evidence of use,
let alone widespread use, of NICKEL in the relevant field in this case.