adp Gauselmann GmbH

Trademark Trial and Appeal Board

May 25, 2005

No. 75858618 (T.T.A.B. May. 25, 2005)

Mailed: May 25, 2005
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re adp Gauselmann GmbH
________

Serial No. 75858618
_______

Horst M. Kasper, Esq. for adp Gauselmann GmbH

Robin S. Chosid-Brown, Trademark Examining Attorney, Law Office
102 (Thomas V. Shaw, Managing Attorney).
_______

Before Seeherman, Hohein and Bucher, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

adp Gauselmann GmbH has filed an application to
register on the Principal Register the mark "ISLAND" for "coin-
operated casino, entertainment and gambling apparatuses, and
devices, namely, game machines, video game machines, slot
machines, video slot machines, casino video slot machines,
accounting computer software, electronic cards, poker machines,
electronic backgammon and parts thereof."1
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that

1 Ser. No. 75858618, filed on November 23, 1999, which is based on an
allegation of a bona fide intention to use such mark in commerce.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. No. 75858618
2
applicant's mark, when applied to its goods, so resembles the
mark "GOLD ISLAND," which is registered for "gaming equipment,
namely, slot machines and video slot machines with video output
capability,"2 as to be likely to cause confusion, or to cause
mistake, or to deceive.
Applicant has appealed. Briefs have been filed, but an
oral hearing was not requested. We affirm the refusal to
register.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 568 (CCPA 1973). However, as indicated in
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976), in any likelihood of confusion
analysis, two key considerations are the similarity or
dissimilarity in the goods at issue and the similarity or
dissimilarity of the respective marks in their entireties.3
Here, inasmuch as applicant's goods (i.e., "slot machines,"
"video slot machines" and "casino video slot machines") are
legally identical in part to registrant's goods (i.e. "slot
machines" and "video slot machines with video output

2 Reg. No. 2,053,967, issued on the Principal Register on April 22,
1997, which sets forth a date of first use anywhere and in commerce of
October 16, 1995; combined affidavit §§8 and 15.

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."
192 USPQ at 29.

Ser. No. 75858618
3
capability"),4 the primary focus of our inquiry is on the
similarities and dissimilarities in the respective marks when
considered in their entireties.
Turning, therefore, to consideration of the marks at
issue, we note as a preliminary matter that, "[w]hen marks would
appear on virtually identical goods ..., the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines." Century 21 Real Estate Corp. v. Century
Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1994). See also ECI Division
of E-Systems, Inc. v. Environmental Communications Inc., 207 USPQ
443, 449 (TTAB 1980). Applicant contends, nonetheless, that in
essence the commercial impression conveyed by its mark "ISLAND"
is simply "the [general] concept embedded in [the word]
'island,'" while the commercial impression engendered by
registrant's mark "GOLD ISLAND" is that of a specific island.
According to applicant, "a consumer will not be misled by
reference to an abstract island and will not associate such
concept of an abstract island with a particular island such as
... 'GOLD ISLAND.'"5

4 Applicant, we note, does not contend otherwise in its brief.

5 Applicant, in this regard, reiterates in its brief the argument it
first raised in its request for reconsideration of the final refusal.
Specifically, applicant cites as support for its position the
following "examples in other classes where a registration of the mark
'Island' was allowed even after registrations of specific 'Islands'
had been previously registered":

For example, a service mark registration Reg. No.
2,345,387 of the mark "Island" was performed in class 36 in
the year 2000, even though registrations in class 36 had
previously been registered for:

Ser. No. 75858618
4
The Examining Attorney, on the other hand, contends in
her brief that, when considered in their entireties, registrant's
mark "GOLD ISLAND" is dominated by the term "ISLAND," which is
identical to applicant's mark ISLAND. The Examining Attorney
also insists that:
Even if one accepts the applicant's
argument that its mark represents any

Dewees Island Reg. No. 1,963,674 in the year 1996,
and

Callawassie Island Reg. No. 2,026,987 in the year 1996.

Also, a trademark registration Reg. No. 2,013,560 of
the mark "Island" was performed in class 29 in the year
1996, even though registrations in class 36 had previously
been registered for:

Sea Island Reg. No. 539, 637 in the year 1951,

Robins Island Reg. No. 1,744,689 in the year 1993,
and

Claw Island Reg. No. 1,775,991 in the year 1993.

However, as the Examining Attorney correctly points out in a
footnote to her brief:

The applicant did not properly make the registrations a
part of the record. The record in any application must be
complete prior to appeal. [Trademark Rule] ... 2.142(d)
.... Furthermore, the ... Board does not take judicial
notice of registrations, and the mere submission of a list
of registrations does not make these registrations part of
the record. In re Delbar Products, Inc., 217 USPQ 859
(TTAB 1981); In re Duofold Inc., 184 USPQ 638 (TTAB 1974).
To make registrations proper evidence of record, soft
copies of the registrations or the complete electronic
equivalent (i.e., printouts of the registrations taken from
the electronic search records of the United States Patent
and Trademark Office) must be submitted. TMEP §710.03.
See In re JT Tobacconists, 59 USPQ2d 1080, 1081 n. 2 (TTAB
2001) ....

Accordingly, inasmuch as the Examining Attorney's objections are
well taken, the limited information furnished by applicant with
respect to the third-party registrations noted above does not properly
constitute part of the record herein. Nonetheless, we observe that,
even if such information were to be considered, it is without any
probative value because there simply is no indication as to the goods
and services set forth in the third-party registrations.

Ser. No. 75858618
5
abstract island, and the Registrant's mark
identifies a specific place, there is no way
for a customer to know that the "islands" are
not related. Consumers are likely to see the
two marks side by side, or nearby, in a
casino. A customer is likely to think that
the gaming machines come from a family of
"island" marks, [and] that the source of the
goods is the same. The commercial impression
and connotation of the marks, ISLAND and GOLD
ISLAND, for coin operated gaming machines and
slot machines is the same. Any doubt
regarding a likelihood of confusion must be
resolved in favor of the prior registrant.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d
463, 6 USPQ2d 1025 (Fed. Cir. 1988) ....

We find that, due to the shared term "ISLAND," the
marks at issue are so highly similar in their overall sound,
appearance, connotation and commercial impression that, when used
in connection with such identical items of gambling devices or
gaming equipment as "slot machines" and "video slot machines,"
including "casino video slot machines," confusion as to the
source or sponsorship thereof is likely to occur. There is
simply nothing, moreover, in this record which indicates that
either purchasers of such goods or the users thereof would
distinguish registrant's mark "GOLD ISLAND" from applicant's
"ISLAND" mark on the basis that the former designates a real or
actual geographic place while the latter signifies only a
generalized or nonspecific location. Instead, both marks
essentially connote an isolated place which is typically
surrounded by water.6

6 We judicially notice, in this regard, that The American Heritage
Dictionary of the English Language (4th ed. 2000) at 927 defines
"island" as, inter alia, "1. A land mass, especially one smaller than
a continent, entirely surrounded by water." It is settled that the
Board may properly take judicial notice of dictionary definitions.
See, e.g., Hancock v. American Steel & Wire Co. of New Jersey, 203
Ser. No. 75858618
6
Furthermore, while not addressed by applicant, the du
Pont factor of the conditions under which and buyers to whom
sales are made (i.e., "impulse" versus careful, sophisticated
purchasing) also favors a finding of a likelihood of confusion.
Although casino operators and managers would clearly be careful
and discriminating purchasers, the actual users or players of
casino gaming machines and other gambling devices are obviously
ordinary consumers who could be expected to act on impulse with
respect to the coin-operated casino equipment which they choose
to play. Specifically, having experienced good (or bad) luck
while playing, for instance, a "GOLD ISLAND" slot machine or
video slot machine, such players would be likely to play (or
avoid) an "ISLAND" slot machine or video slot machine on the
assumption that such gaming machines share a common origin or
affiliation in that the former is a version of the latter or vice
versa.
We accordingly conclude that purchasers and users who
are familiar or otherwise acquainted with registrant's "GOLD
ISLAND" mark for "gaming equipment, namely, slot machines and
video slot machines with video output capability," would be
likely to believe, upon encountering applicant's highly similar
mark "ISLAND" for, inter alia, such legally identical "coin-
operated casino, entertainment and gambling apparatuses ... and
devices" as "slot machines, video slot machines, [and] casino

F.2d 737, 97 USPQ 330, 332 (CCPA 1953); 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); and Marcal
Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 860 n. 7 (TTAB
1981).
Ser. No. 75858618
7
video slot machines," that the respective goods emanate from, or
are otherwise sponsored by or affiliated with, the same source.
In particular, as noted above, such consumers would be likely to
view applicant's "ISLAND" goods as part of a line of gaming
machines and gambling devices from the same source as that of
registrant's "GOLD ISLAND" products.
Decision: The refusal under Section 2(d) is affirmed.