Bellagio, LLC

Trademark Trial and Appeal Board

Sep 23, 2009

No. 77175007re (T.T.A.B. Sep. 23, 2009)

Mailed: September 23, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
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In re Bellagio, LLC
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Serial No. 77175007
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On Request for Reconsideration
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Michael J. McCue and Emily A. Bayton of Lewis and Roca LLP
for Bellagio, LLC.

Mark Shiner, Trademark Examining Attorney, Law Office 102
(Karen Strzyz, Managing Attorney).
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Before Grendel, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

On July 2, 2009, Bellagio, LLC filed a request for
reconsideration of the Board’s June 2, 2009 decision
affirming the examining attorney’s refusal of registration
of its applied-for mark, DUNES, for “casino services,” on
the ground that the specimen submitted with the application
is unacceptable evidence of service mark use.
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 77175007
2
Applicant asserts (brief on recon., p. 1) as the bases
for its request for reconsideration that the Board erred in
its determination by:
Failing to give Applicant the flexibility it is
entitled to for service mark specimens;

Failing to adequately address the authority cited
by Applicant in which the Board accepted
specimens showing marks as used in the course of
performing or rendering the services; and

Requiring that the specimen “mention the recited
services or otherwise indicate that those
services are being performed.”

Turning first to applicant’s second basis for its
request for reconsideration, the Board is aware of no case
law that requires it to discuss every case cited in an
applicant’s brief, and sees no error in its decision in
that respect. However, to the extent that applicant is
asserting that the Board erred in not following the
principles set forth in the cases, we will address that
argument. In its brief on appeal as well as its request
for reconsideration, applicant principally relies upon the
following cases in support of its position: In re
Metriplex Inc., 23 USPQ2d 1315 (TTAB 1992) (computer screen
display acceptable specimen for various data transmission
services); In re Eagle Fence Rentals, Inc., 231 USPQ 228
(TTAB 1986) (photographs of chain-link fences displaying
mark acceptable for rental of chain-link fences); and In re
Ser No. 77175007
3
Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984)
(photograph of performer wearing mark consisting of costume
acceptable for various entertainment services).1 To state
the obvious, these decisions involve specimens and services
that are completely unrelated to those at issue herein. As
a result, we are not persuaded that acceptance of the
specimens submitted in those cases compels us to accept
applicant’s specimens in this case, which consist of a
photograph of a slot machine, for applicant’s recited
casino services. Further, it is well-established that each
case must be decided on its own facts. See, for example,
In re Red Robin, supra, 222 USPQ at 914 n.9. Thus, we find
the present situation to be distinguishable from the cases
cited by applicant.
Turning next to applicant’s third basis for
reconsideration, it is a settled point of law as noted in
our June 2, 2009 determination that in order to be
acceptable specimens of service mark use, “there must be a
direct association between the mark sought to be registered
and the services specified in the application, and there
must be sufficient reference to the services in the

1 In addition, applicant relies upon a non-precedential TTAB
decision also involving specimens and services unrelated to those
in the instant application. Accordingly, and because the
decision is not a precedent of this tribunal, we decline to
consider it further.
Ser No. 77175007
4
specimens to create this association” (page 8), citing In
re Monograms America Inc., 51 USPQ2d 1317 (TTAB 1999). We
went on note that the applied-for mark “must be used in
such a manner that it would be readily perceived as
identifying the source of such services” (page 9) citing In
re Advertising & Marketing Development, Inc, 821 F.2d 614,
2 USPQ2d 2010 (Fed. Cir. 1987) and In re Metrotech, 33
USPQ2d 1049 (Com’r Pats. 1993). In accordance with these
and other authorities, we went on to find that, in this
case applicant’s specimen “fails to show the requisite
direct association between the mark and the activities
described thereunder” (page 9); and that while the specimen
displays the applied-for mark, it “fails to mention the
recited services or otherwise indicate that those services
are being performed” (page 10). The latter statement in
our determination does not, as applicant appears to argue,
impose a requirement that its specimen “explicitly identify
the services to be proper” (brief on recon., p. 5).
Rather, such statement notes that applicant’s specimen
fails to sufficiently reference the recited services to
create an association with its mark. As such, our June 2,
2009 determination does not impose a stricter burden on
applicant than that required by established decisional law.
Ser No. 77175007
5
Finally, turning to applicant’s first basis for its
request for reconsideration, we find applicant’s arguments
that it should be provided “the requisite flexibility it is
entitled to when submitting service mark specimens” (brief
on recon., p. 3), essentially to be a reargument of points
previously raised in its brief on appeal. Applicant
correctly notes that due to the intangible nature of
services, this tribunal has accepted a wide variety of
specimens therefor. However, as applicant also correctly
notes, and as observed above, it is necessary that the
submitted specimens demonstrate a direct association
between the mark and the services provided. In accordance
with our discussion above and as clearly indicated in our
June 2, 2009 determination, such direct association is not
present in the specimens submitted by applicant herein.
In summary, we find that applicant points to no error
in our June 2, 2009 determination, but rather disagrees
with the result reached therein and otherwise presents
reargument of points previously raised in support of the
position articulated in its brief on appeal. As a result,
we are not persuaded that this panel “overlooked and/or
misapprehended” (brief, p. 1) the applicable law or facts
our June 2, 2009 determination.
The request for reconsideration is denied.