Sierra Design Group

Trademark Trial and Appeal Board

Feb 5, 2003

No. 76154885 (T.T.A.B. Feb. 5, 2003)

Paper No. 13
GFR
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
________
In re Sierra Design Group
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Serial No. 76/154,885
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Kirstin M. Jahn of Jahn & Associates, LLC for Sierra Design
Group.
Andy Corea, Trademark Examining Attorney, Law Office 101
(Jerry Price, Managing Attorney).
_______
Before Seeherman, Hairston and Rogers,
Administrative Trademark Judges.
Opinion by Rogers, Administrative Trademark Judge:
Sierra Design Group has filed an application to
register the mark PENNY JUNCTION for goods identified as
"gaming equipment, namely, slot machines with or without a
video output, electromechanical gaming equipment and
electronic gaming equipment."1 During prosecution,
1 Serial No. 76/154,885, in International Class 9, filed October
26, 2000, based on applicant's allegation of first use and first
use in commerce as of January 28, 2000.
This Opinion is Not
Citable as Precedent
of the TTAB
Ser No. 76/154,885
2
applicant acceded to the examining attorney's requirement
that applicant enter a disclaimer of PENNY.
The examining attorney has refused registration under
Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d),
because of the prior registration of JACKPOT JUNCTION and
design (shown below) for "gaming equipment, namely, video
slot machines."2
The registration includes a disclaimer of JACKPOT and the
following description: “The mark consists, in part, of the
stylized representation of a treasure map to find the
jackpot.” When the examining attorney made the refusal of
registration final, applicant appealed. Applicant filed a
request for reconsideration that the examining attorney
denied. Both applicant and the examining attorney have
filed briefs, but an oral hearing was not requested.
2 Registration No. 2,160,583, issued May 26, 1998, in
International Class 9, and listing October 1, 1996 as the
registrant’s date of first use and first use in commerce.
Ser No. 76/154,885
3
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 of the
marks, the identical nature of the goods, in part, and the
presumptively identical nature of classes of purchasers and
ultimate users of the involved goods. 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, through its request for reconsideration, to rely
on third-party registrations and applications to show
weakness in the cited mark (each of the marks referenced by
applicant includes the term “junction” and, according to
applicant, is registered in, or is the subject of an
application in, Class 9). In his denial of applicant’s
request for reconsideration, and again in his brief, the
examining attorney quite clearly explained that applicant's
submission of a list of marks with their corresponding
registration or application numbers was insufficient to
place the third-party registrations in the record. We
Ser No. 76/154,885
4
agree, as the law in this regard is quite settled. Mere
listings of registrations, or copies of private company
search reports, are not sufficient to make the
registrations of record. See In re Dos Padres Inc., 49
USPQ2d 1860, n. 2 (TTAB 1998), and In re Broadway Chicken
Inc., 38 USPQ2d 1559, n. 6 (TTAB 1996); see also, In re
Duofold Inc., 184 USPQ 638 (TTAB 1974). Moreover, even if
the law allowed consideration of the list, we note that 14
of the 34 marks in the list are “dead” (i.e., the
registrations have either expired or otherwise been
cancelled and the applications have been abandoned3); also,
the mere fact that the 20 “live” filings all cover, in
whole or in part, Class 9 goods does not establish that the
goods are related in any way to the goods covered by the
involved application and cited registration.4 In sum, even
if we could consider the list, it would have no probative
value.
We begin our analysis of the likelihood of confusion
by noting that the applicant’s and registrant’s goods are,
3 We also note that, “live” or “dead,” copies of third-party
applications are evidence only of the filing of such
applications. Zappia-Paradiso, S.A. v. Cojeva Inc., 144 USPQ 101
(TTAB 1964).
4 The variety of goods in Class 9 is so broad that even identical
marks could coexist within the class for widely divergent goods.
See the summary listing of Class 9 goods that appears at 37
C.F.R. § 6.1.
Ser No. 76/154,885
5
at least in part, identical. Registrant’s goods are video
slot machines and these are encompassed by applicant’s
identification of goods. In addition, while applicant
argues that it is significant that its slot machines are
“penny” slots, neither applicant’s nor registrant’s
identification is restricted and each must be read to
include video slot machines requiring money or equivalent
tokens of various denominations, including pennies,
nickels, quarters, etc. While it may be unrealistic to
assume the possibility of applicant using PENNY JUNCTION on
a video slot machine that requires more than a penny, we
must nonetheless consider the concurrent use of the marks
on penny video slot machines, as there is nothing in
registrant’s identification that, per se, excludes use of
its JACKPOT JUNCTION and design mark on such machines.
When marks will appear on virtually identical goods or
services, “the degree of similarity [between marks]
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
Turning to a comparison of the marks, applicant's mark
is PENNY JUNCTION in typed form. Applicant argues that, in
contrast to the registered mark, applicant’s mark is
displayed in a different form of lettering from that in the
Ser No. 76/154,885
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JACKPOT JUNCTION and design mark, is displayed in different
colors, and is accompanied by different trade dress
(specifically, the design of a penny that, according to
applicant, reinforces PENNY as the dominant term in
applicant’s mark, notwithstanding that PENNY has been
disclaimed). Applicant also argues that the cited mark
includes a design element and this composite mark creates a
different impression than applicant’s mark and trade dress.
It is well-settled, however, that when one applies to
register a mark in typed form, the Board must consider that
it could be displayed in any form or size of lettering,
including the slightly stylized form of display utilized
for the words in the registered mark. Phillips Petroleum
Co. v. C. J. Webb, Inc., 442 F.2d 1376, 170 USPQ 35 (CCPA
1971), and Jockey International Inc. v. Mallory & Church
Corp., 25 USPQ2d 1233 (TTAB 1992). Further, we cannot
consider applicant’s trade dress as an element that could
help distinguish applicant’s mark from registrant’s mark,
for the trade dress is not part of the mark in the
application and applicant is free to change it or abandon
it at any time. Vornado, Inc. v. Breuer Electric Mfg. Co.,
390 F.2d 724, 156 USPQ 340, 342 (CCPA 1968).
As a result, the marks we compare are JACKPOT JUNCTION
and design and PENNY JUNCTION. Both JACKPOT and PENNY have
Ser No. 76/154,885
7
been disclaimed because of their descriptiveness. As the
examining attorney has correctly observed, while disclaimed
terms are 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). Each mark creates the same
commercial impression of a place, a “Junction.” In
applicant’s mark, that place is one in which a penny will
do; in registrant’s mark, the place is one where a jackpot
may be found. In this case, we find the similar commercial
impressions created by the marks to be more significant
than the visual difference resulting from registrant’s use
of a map design and the pronunciation difference resulting
from use, on the one hand, of PENNY and, on the other hand,
of JACKPOT. That is, the word JUNCTION is identical in
both marks; and the descriptive elements PENNY and JACKPOT,
and the design element in the cited mark, are not
sufficient to create marks with different commercial
impressions.
Turning to the channels of trade and classes of
customers for the goods, there are no restrictions in
either identification and we must assume that the goods can
Ser No. 76/154,885
8
be marketed to the same classes of purchasers, through the
same channels of trade, and that the slot machines will be
made available to any end user willing to deposit the
necessary money or equivalent token. It is generally known
and not subject to reasonable dispute that the gaming and
casino industry is highly regulated and that the respective
goods, even without any restriction included in the
identifications, can be considered as generally targeted
only to business purchasers in the gaming and casino
industry. Even though there is nothing in the record to
support the argument, we accept as reasonable applicant’s
contention that purchasers of video slot machines will be
deliberative in their purchases. 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.
Accordingly, the Board must consider whether casino
patrons who may be exposed to one of the involved marks on
a video slot machine would, if exposed to the other mark on
another video slot machine, be mistaken or confused or
deceived. Casino patrons would likely conclude, because of
the similarities of the marks, that the machines have a
common source or sponsorship.
Ser No. 76/154,885
9
Given the similar commercial impressions of the marks,
the identical nature of the goods, the overlap between
purchasers and prospective end users, the Board finds that
there exists a likelihood of confusion, mistake or
deception. Finally, if we had any doubt on the issue, we
would have to resolve that doubt in favor of the prior user
and registrant. Kenner Parker Toys v. Rose Art Industries,
963 F.2d 350, 22 USPQ2d 1453, 1458 (Fed. Cir. 1992).
Decision: The refusal under Section 2(d) of the
statute is affirmed.