Aristocrat Technologies Australia Pty Ltd

Trademark Trial and Appeal Board

Feb 4, 2014

No. 77753502 (T.T.A.B. Feb. 4, 2014)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 4, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Aristocrat Technologies Australia Pty Ltd
_____

Serial No. 77753502
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Abiola Shobola of Aristocrat Technologies, Inc. for Aristocrat Technologies Australia
Pty Ltd.

Giancarlo Castro, Trademark Examining Attorney, Law Office 110 (Chris A.F.
Pedersen, Managing Attorney).
_____

Before Grendel, Bergsman, and Hightower, Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
On June 5, 2009, applicant Aristocrat Technologies Australia Pty Ltd applied
to register the mark BUFFALO, in standard characters, for “gaming machines,
namely, devices which accept a wager” in International Class 009.1 The Trademark
Examining Attorney has issued a final refusal to register applicant’s mark under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Specifically, registration has been
refused on the ground that applicant’s mark, as applied to the goods identified in

1 Application Serial No. 77753502, alleging first use and first use in commerce at least as
early as November 6, 2003.
Serial No. 77753502
2

the application, so resembles the mark BUFFALO BUCKS, previously registered in
typeset form on the Principal Register for “gaming machines and operating software
that runs thereon” in International Class 009,2 as to be likely to cause confusion, to
cause mistake, or to deceive.
Applicant has appealed the final refusal. After careful consideration of the
evidence of record and the arguments of counsel, we affirm the refusal to register.
Record
The examining attorney made of record printouts of the cited registration and
Registration No. 3279483 for BUFFALO MOUNTAIN (in standard characters) for
the following goods in International Class 009: “gaming devices, namely gaming
machines and computer software used therewith to enable the gaming machine to
run; downloadable computer software for use in connection with gaming machines.”
In the initial Office action, the examining attorney required applicant to submit a
claim of ownership of the latter registration, for BUFFALO MOUNTAIN, and
applicant claimed ownership of Registration No. 3279483 in its request for
reconsideration.
Applicant submitted the following evidence:
• a summary list of 19 third-party registrations for gaming equipment
incorporating the terms PRINCESS, TIGER, or JADE;3

2 Registration No. 2765289, issued September 16, 2003; renewed.
3 November 30, 2010 response to Office action at 8-10, Exhibit A.
Serial No. 77753502
3

• printouts from what appears to be the website of a previous owner of
the cited registration;4
• a printout from Wikipedia.com titled “Buffalo nickel”;5
• printouts from the online message board “slot machines forum”;6 and
• pictures of applicant’s BUFFALO gaming machine.7
The examining attorney did not object to applicant’s summary list of third-
party registrations in the December 22, 2010 final Office action. The examining
attorney’s failure to advise applicant during examination that such lists are
insufficient to make the listed registrations of record constituted a waiver of any
objection to consideration of the list. In re City of Houston, 101 USPQ2d 1534, 1536
(TTAB 2012), aff’d, 731 F.3d 1326, 108 USPQ2d 1226 (Fed. Cir. 2013); Trademark
Trial and Appeal Board Manual of Procedure (TBMP) §§ 1207.03, 1208.02 (3d ed.
rev. 2 June 2013). Therefore, we will consider the summary list of third-party
registrations “for whatever limited probative value such evidence may have.” In re
Broyhill Furniture Indus. Inc., 60 USPQ2d 1511, 1513 n.3 (TTAB 2001).8
Applicant also included in the text of its appeal brief a chart of eight
registrations – including the cited registration – and one pending application

4 Id. at 11 and 21, Exhibits C and E, from rocketgaming.com. Assignment of Registration
No. 2765289 from Rocket Gaming Systems, LLC to the Miami Tribe of Oklahoma Business
Development Authority was recorded November 12, 2013 at Reel 5152/Frame 5030.
5 Id. at 12-20, Exhibit D.
6 Id. at 22-31, Exhibit F, from slotmachinesforum.com.
7 Id. at 32-34, Exhibit B.
8 We note, however, that the mere submission of a list of registrations does not make the
listed registrations of record and the Board does not consider any information regarding
those registrations other than that provided in the lists. In re Jump Designs LLC, 80
USPQ2d 1370, 1372 (TTAB 2006); In re Promo Ink, 78 USPQ2d 1301, 1304 (TTAB 2006);
TBMP § 1208.02.
Serial No. 77753502
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incorporating the term BUFFALO; applicant is listed as the owner of the pending
application and one of the registrations shown in the chart. Four of the
registrations also were referenced in the text of applicant’s November 30, 2010
response to Office action.9 Applicant did not make the underlying registrations of
record. However, the examining attorney did not object to the references to the
registrations in applicant’s chart in the December 22, 2010 final Office action or in
his appeal brief. Therefore, we will also consider the list of these eight registrations
for whatever limited probative value they may have. Pending applications,
however, are evidence only that they were filed on a certain date. Nike Inc. v.
WNBA Enters. LLC, 85 USPQ2d 1187, 1193 n.8, 1201 (TTAB 2007).
Finally, applicant attached a different version of Exhibit A – its summary list
of third-party registrations incorporating terms other than BUFFALO – to its
appeal brief. Applicant also attached several new pages of printouts from third-
party websites to its reply brief. Evidence submitted with appeal briefs is untimely.
Therefore, the revised summary list and the Internet printouts submitted for the
first time with the appeal brief have been given no consideration. Trademark Rule
§ 2.142(d), 37 C.F.R. § 2.142(d); In re Fitch IBCA Inc., 64 USPQ2d 1058, 1059 n.2
(TTAB 2002); In re Trans Cont’l Records Inc., 62 USPQ2d 1541, 1541 n.2 (TTAB
2002); TBMP §§ 1203.02(e), 1207.01. See also In re Max Capital Group Ltd., 93
USPQ2d 1243, 1244 n.4 (TTAB 2010) (noting that an applicant may request remand
if it wishes to make additional evidence of record).

9 November 30, 2010 response to Office action at 3.
Serial No. 77753502
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Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); see also In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the goods. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (CCPA 1976) (“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.”). We discuss each of the du Pont factors as to
which applicant or the examining attorney submitted argument or evidence. To the
extent that any other du Pont factors for which no evidence was presented may
nonetheless be applicable, we treat them as neutral.
A. Similarity of the Goods and Channels of Trade
We first address the similarity of the goods and channels of trade, the second
and third du Pont factors, respectively.
Applicant’s goods are “gaming machines, namely, devices which accept a
wager.” The goods recited in the cited registration are “gaming machines and
operating software that runs thereon,” not limited as to nature, type, channels of
trade, or classes of purchasers.
We find that applicant’s goods are a type of gaming machines, that is, a
subset of the broader “gaming machines” identified in the cited registration.
Serial No. 77753502
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Therefore, we presume that the prior registration encompasses applicant’s more
specific goods, the goods move in all normal channels of trade, and they are
available to all potential classes of ordinary consumers. See Citigroup Inc. v.
Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006); In re Elbaum,
211 USPQ 639, 640 (TTAB 1981). Moreover, because the gaming machines
described in the application and the cited registration are legally identical, we
presume that the channels of trade and classes of purchasers are the same. See
American Lebanese Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101
USPQ2d 1022, 1028 (TTAB 2011); see also In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal
presumption in determining likelihood of confusion).
Applicant attempts to distinguish the channels of trade for its goods from
those in the cited registration by arguing that applicant manufactures slot
machines while the previous owner of the cited registration operates primarily in a
different class of gaming that includes only bingo machines.10 It is well-established,
however, that we are bound by the identification as written in the registration and
cannot limit registrant’s goods, channels of trade, or classes of customers to what
any evidence shows them to be. See In re Dixie Rests., Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997); Octocom Sys. Inc. v. Houston Computer Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Bercut-

10 See Appeal Brief at 7-8.
Serial No. 77753502
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Vandervoort & Co., 229 USPQ 763, 764-65 (TTAB 1986) (“It is well settled that in a
proceeding such as this, the question of likelihood of confusion must be determined
by an analysis of the marks as applied to the goods identified in the application vis-
a-vis the goods recited in the registration, rather than what extrinsic evidence
shows those goods to be.”). Applicant’s argument that confusion is unlikely because
gaming machines bear copyright notices is similarly unpersuasive.11
In our likelihood of confusion analysis, these findings under the second and
third du Pont factors strongly support a conclusion that confusion is likely.
B. Similarity of the Marks
We turn next to the du Pont likelihood of confusion factor focusing on “‘the
similarity or dissimilarity of the marks in their entireties as to appearance, sound,
connotation, and commercial impression.’” Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed.
Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently
similar in terms of their commercial impression’ such that persons who encounter
the marks would be likely to assume a connection between the parties.” Coach
Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed.
Cir. 2012) (citation omitted).
Because the similarity or dissimilarity of the marks is determined on the
marks in their entireties, our analysis cannot be predicated on dissecting the marks

11 See id. at 10.
Serial No. 77753502
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into their various components; that is, the decision must be based on the entire
marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 751 (Fed. Cir. 1985); see also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d
1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be
dissected and considered piecemeal; rather, it must be considered as a whole in
determining likelihood of confusion.”). On the other hand, 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 the ultimate conclusion rests on a
consideration of the marks in their entireties. In re Nat’l Data Corp., 224 USPQ at
751.
We also keep in mind that when, as here, marks would appear on legally
identical goods or services, “the degree of similarity necessary to support a
conclusion of likely confusion declines.” Century 21 Real Estate Corp. v. Century
Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Jansen Enters.
Inc. v. Rind, 85 USPQ2d 1104, 1108 (TTAB 2007). The focus is on the recollection of
the average purchaser, who normally retains a general rather than a specific
impression of trademarks. Joel Gott Wines LLC v. Rehoboth Von Gott Inc., 107
USPQ2d 1424, 1430 (TTAB 2013).
Applicant’s mark is BUFFALO, while the cited registered mark is BUFFALO
BUCKS. We find BUFFALO to be the dominant term in BUFFALO BUCKS, given
both its place of prominence as the first word in the cited mark and the apparently
descriptive nature of the term “bucks” in association with gaming machines. See,
Serial No. 77753502
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e.g., Century 21 Real Estate Corp., 23 USPQ2d at 1700 (stating that consumers will
first notice the identical lead word on encountering the marks); Presto Prods. Inc. v.
Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1896 (TTAB 1988) (stating that “it is often
the first part of a mark which is most likely to be impressed upon the mind of a
purchaser and remembered”).12 The applicant’s single-word mark is thus identical
to the first, and dominant, term in the cited two-word mark.
Registrant’s mark, moreover, incorporates applicant’s mark in its entirety,
increasing the similarity between the two. See, e.g., In re Mighty Leaf Tea, 601 F.3d
1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to
registrant’s mark ML MARK LEES); Lilly Pulitzer, Inc. v. Lilli Ann Corp., 376 F.2d
324, 153 USPQ 406, 407 (CCPA 1967) (THE LILLY as a mark for women’s dresses
is likely to be confused with LILLI ANN for women’s apparel including dresses); In
re U.S. Shoe Corp., 229 USPQ 707, 709 (TTAB 1985) (CAREER IMAGE for women’s
clothing stores and women’s clothing likely to cause confusion with CREST
CAREER IMAGES for uniforms including items of women’s clothing). Indeed, in
the latter case, the Board observed that “Applicant’s mark would appear to
prospective purchasers to be a shortened form of registrant’s mark.” In re U.S. Shoe
Corp., 229 USPQ at 709.
We are not persuaded by applicant’s argument that the marks differ as
actually currently used by it and the owner of the cited registration on their gaming

12 See also Reply Brief at 5 (stating that the cited registration “is a classic slot machine
name whereby the mark references money that a player can win, e.g., BUCKS, CASH,
LOOT, JACKPOT, etc.”).
Serial No. 77753502
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machines. Both the application and the cited registration are in standard character
form, and standard character marks are not limited to any particular font, size,
style, or color. In re Viterra Inc., 101 USPQ2d at 1909.
For all of the reasons discussed above, we find applicant’s mark BUFFALO to
be similar in sight, sound, connotation, and overall commercial impression to the
cited mark BUFFALO BUCKS. Therefore, the first du Pont factor supports a
conclusion that confusion is likely.
C. Conditions of Sale and Consumer Sophistication
The fourth du Pont factor considers the conditions under which and buyers to
whom sales are made. Applicant argues, without evidentiary support, that some of
the end users of its products are regular and knowledgeable slot players who are
unlikely to experience confusion, while other consumers are only occasional slot
players.13 The standard of care is that of the least sophisticated purchaser. Alfacell
Corp. v. Anticancer Inc., 71 USPQ2d 1301, 1306 (TTAB 2004). As we have often
noted, furthermore, “even consumers who exercise a higher degree of care are not
necessarily knowledgeable regarding the trademarks at issue, and therefore
immune from source confusion.” Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546,
1552 (TTAB 2012); see also Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd.,
434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970) (“Human memories even of
discriminating purchasers . . . are not infallible.”). We therefore find the fourth
factor to be neutral.

13 See Appeal Brief at 9.
Serial No. 77753502
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D. The Number and Nature of Similar Marks in Use on Similar Goods
We next consider du Pont factor six, the number and nature of similar marks
in use on similar goods. Applicant argues that:
Competitors within the gaming industry very often utilize
similar or even the same game themes in their products.
It is generally accepted within [ ] the industry and unless
game names are so similar as to be confusing or infringing,
competing products with similar themes/names tend to
peacefully coexist.14
With respect to the term BUFFALO specifically, applicant included in its appeal
brief a chart listing seven registrations (plus the pending application discussed supra
and the cited registration); the following chart shows some of the information as
provided by applicant:15
Mark Registration
No.
Class of Goods /
Services
Owner
BUFFALO BILL’S RESORT &
CASINO
3270691 41 Affinity Gaming,
LLC
BUFFALO BILL’S RESORT
CASINO and design
2015414 41 Affinity Gaming,
LLC
BUFFALO MOUNTAIN 3279483 9 Applicant
BUFFALO THUNDER RESORT
& CASINO and design
3985905 21, 25, 41, 43 Buffalo Thunder,
Inc.
PRIMM VALLEY CASINO
RESORTS BUFFALO BILL’S
PRIMM VALLEY WHISKEY
PETE’S and design
3753480 41 Affinity Gaming,
LLC
SENECA BUFFALO CREEK
CASINO
3596671 41 Seneca Gaming
Corp.

14 Id. at 2-3.
15 Id. at 3-4.
Serial No. 77753502
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Mark Registration
No.
Class of Goods /
Services
Owner
THUNDERING BUFFALO 3967823 9 IGT

Applicant’s list is not persuasive, for several reasons. Initially, each of these marks
makes a commercial impression less similar to the cited registration, BUFFALO
BUCKS, than does applicant’s single-word mark BUFFALO because all the listed
marks contain terms in addition to BUFFALO.
Third-party registrations can be used in the manner of dictionary definitions,
to show that a term has a significance in a particular industry, and therefore that
the inclusion of the common element is not a sufficient basis on which to find that
confusion is likely. Tektronix, Inc. v. Daktronics, Inc., 187 USPQ 588, 592 (TTAB
1975), aff’d, 534 F.2d 915, 189 USPQ 693 (CCPA 1976). The third-party
registrations submitted by applicant do not show that BUFFALO marks have been
adopted because BUFFALO has a particular significance in the gaming industry.
Rather, in three of the marks, BUFFALO is part of the name BUFFALO BILL, and
in another mark it appears to relate to a geographic name, BUFFALO CREEK. We
cannot conclude that, as used in connection with the cited registrant’s goods,
BUFFALO has a suggestive significance such that the registration is entitled to a
limited scope of protection.
Most important, the third-party registrations incorporating the term
BUFFALO listed by applicant are not evidence that the marks therein have been
used at all, let alone used so extensively that consumers have become sufficiently
conditioned by their usage that they can distinguish between such marks on the
Serial No. 77753502
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basis of minor differences. The probative value of third-party trademarks depends
entirely on their usage. Palm Bay Imports, Inc., 73 USPQ2d at 1693. Where, as
here, the record includes no evidence about the extent of third-party uses, the
probative value of this evidence is minimal. Han Beauty, Inc. v. Alberto-Culver Co.,
236 F.3d 1333, 57 USPQ2d 1557, 1561 (Fed. Cir. 2001); see also Olde Tyme Foods
Inc. v. Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542, 1545 (Fed. Cir. 1992) (“As to
strength of a mark, however, registration evidence may not be given any weight.”).
“The existence of these registrations is not evidence of what happens in the market
place or that customers are familiar with them nor should the existence on the
register of confusingly similar marks aid an applicant to register another likely to
cause confusion, mistake or to deceive.” AMF Inc. v. American Leisure Prods., Inc.,
474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); see also In re Max Capital Group
Ltd., 93 USPQ2d at 1248 (third-party registrations cannot justify registration of
another confusingly similar mark).
Finally, each case must be decided on its own merits. We are not privy to the
records (or even copies) of the other registrations, and the determination of the
registrability of different marks by a trademark examining attorney cannot control
the results in the case now before us. In re Nett Designs Inc., 236 F.3d 139, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if some prior registrations had some
characteristics similar to [applicant’s] application, the PTO’s allowance of such prior
registrations does not bind the Board or this court.”).
Serial No. 77753502
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E. Applicant’s Claim of Acquired Distinctiveness
In its request for reconsideration, applicant sought to avoid the likelihood of
confusion refusal by amending its application to assert a claim of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f).
Whether applicant’s mark has acquired distinctiveness is not controlling on the
issue of likelihood of confusion. In re Bissett-Berman Corp., 476 F.2d 640, 177
USPQ 528, 529 (CCPA 1973); In re SL&E Training Stable Inc., 88 USPQ2d 1216,
1220 n.7 (TTAB 2008).
Conclusion
We have considered all of the evidence of record as it pertains to the relevant
du Pont factors. To the extent that any other du Pont factors for which no evidence
was presented by applicant or the examining attorney may nonetheless be
applicable, we treat them as neutral. In view of our findings that the marks are
similar and the goods are in part legally identical and move in the same channels of
trade and to the same customers, we find that applicant’s mark is likely to cause
confusion with the mark in cited Registration No. 2765289 when used in association
with applicant’s goods.
Decision: We affirm the examining attorney’s refusal to register applicant’s
mark under Section 2(d) of the Trademark Act.