Bellagio, LLC

Trademark Trial and Appeal Board

Jun 2, 2009

No. 77175007 (T.T.A.B. Jun. 2, 2009)

Mailed: June 2, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Bellagio, LLC
________

Serial No. 77175007
_______

Michael J. McCue and Emily A. Bayton of Lewis and Roca LLP
for Bellagio, LLC.

Mark Shiner, Trademark Examining Attorney, Law Office 102
(Karen M. Strzyz, Managing Attorney).
_______

Before Grendel, Cataldo and Taylor,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Bellagio, LLC to register
on the Principal Register the mark DUNES in standard
characters for “casino services” in International Class 41.1

1 Application Serial No. 77175007 was filed on May 7, 2007, based
on applicant’s allegation of December 31, 1956 as a date of first
use of the mark anywhere and in commerce under Section 1(a) of
the Trademark Act.
In addition, applicant claimed ownership of cancelled
Registration No. 1401610 for the mark DUNES for “casino
services,” issued to applicant’s predecessor on July 15, 1986,
assignment to applicant recorded on October 27, 1999, and
cancelled under Section 8 of the Trademark Act on April 21, 2007.
The file from the application underlying Registration No. 1401610
is not of record and, in any event, we note that applicant’s
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 77175007
2
The trademark examining attorney initially rejected
the specimen submitted with the application on the ground
that it fails to indicate use of the mark as a service mark
in connection with the recited services. When the
examining attorney made final the requirement that
applicant submit an acceptable specimen of use, applicant
appealed. Applicant and the examining attorney filed
briefs on the issue under appeal.2
Applicant asserts that its specimen of use (displayed
below) “consists of a color photograph of a slot machine
located on the floor of Applicant’s casino in Las Vegas,
Nevada;”3 that “slot machines are the most popular gaming
method in casinos and can constitute as much as 70% of an
average casino’s income;”4 and that “given the popularity of
slot machines in the gaming industry, consumers who
encounter these machines on the casino floor know and

cancelled registration is not evidence of anything except that it
issued. See TBMP §704.03(b) (2d ed. rev. 2004) and cases cited
therein. See also Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650 (TTAB 2002). Any benefits conferred by the
registration, including the evidentiary presumptions afforded by
Section 7(b) of the Trademark Act were lost when the registration
expired. See, e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d
1246, 178 USPQ 46 (CCPA 1973).
2 The involved application was originally examined by another
examining attorney, but was subsequently reassigned to the
attorney whose name is shown to prepare the appeal brief.
3 Applicant’s brief, p. 9.
4 Id.
Ser No. 77175007
3
understand that the machines are used for gaming.”5
Applicant argues that its
DUNES-branded slot machines appear throughout the
Bellagio casino floor. Consumers encountering
the DUNES slot machines are undoubtedly aware
that the machines themselves are not for sale.
Indeed, casinos do not sell slot machines.
Rather, the DUNES-branded slot machines are used
by customers for gaming, which is the casino
service offered by Applicant to its customers.
Indeed, casinos offer casino services through
devices, including slot machines, roulette
wheels, and tables. … Applicant’s use of the
DUNES mark on front panels of its slot machines
creates in the mind of the consumer a direct
association between Applicant’s DUNES mark and
its casino services.6

5 Id.
6 Id., p. 9-10.
Ser No. 77175007
4
Applicant argues that, as a result of the foregoing,
“when encountering a DUNES-branded slot machine inside the
Bellagio casino, consumers readily identify the slot
machine as providing casino services.”7 In support of its
arguments, applicant submitted with its September 26, 2008
request for reconsideration articles retrieved from the
online, open-source dictionary, Wikipedia, concerning slot
machines and the Dunes Hotel and Casino.
In addition, applicant submitted for the first time
with its brief an alternative substitute specimen
(displayed below) consisting of “a photograph of a sign
indicating casino services relating to designated slot
machines. The language on the image states:
MATCHES ANY OTHER SYMBOL ON PAYLINE
DOUBLES WINNING COMBINATION EXCEPT
WHEN 3 DUNES ARE SHOWING ON PAYLINE

PAYS 4X WINNING COMBINATION EXCEPT
WHEN 3 DUNES ARE SHOWING ON PAYLINE”8

7 Id., p. 10.
8 Id., p. 11.

Ser No. 77175007
5

Applicant also submitted a declaration in support thereof.
The examining attorney maintains that the specimen
submitted with the original application displays the mark
on goods, namely, slot machines, and not in connection with
the sale or advertising of applicant’s “casino services.”
The examining attorney further maintains that, as a result,
the submitted specimen fails to create the necessary
association between the mark and the services identified
thereunder. The examining attorney maintains in addition
that the specimen fails to indicate applicant as the source
of the services identified under the mark.
With regard to the substitute specimen submitted by
applicant with its brief, the examining attorney contends
that such substitute specimen is untimely and should not be
considered. The examining attorney further argues that “in
Ser No. 77175007
6
any event, this specimen fails to show proper service mark
usage in commerce for the same reasons as discussed below –
it fails to associate applicant’s mark with its casino
services and there is no indication consumers would
recognize the mark as indicating applicant as the source of
such services.”9
Specimen Submitted with Applicant’s Brief
As an initial matter, we do not agree with the
examining attorney that the substitute specimen submitted
by applicant with its brief is untimely “evidence”
submitted after appeal. Cf. TBMP §1207.01 and the
authorities cited therein. Rather, the substitute specimen
is more properly an amendment in the alternative to
overcome the instant refusal to register. See TBMP
§1205.01 and the authorities cited therein. In that
regard, we note that the better practice would have been
for applicant to file a request for remand to the examining
attorney for consideration of the substitute specimen along
with a request to suspend proceedings in the appeal pending
the Board’s determination thereof. See Id. Nonetheless,
the Board may treat the substitute specimen submitted with
applicant’s brief as a request for remand, and consider

9 Brief, p. 3.
Ser No. 77175007
7
whether good cause has been shown in determining the
request. See Id.
In this case, however, we note that applicant has not
made any showing of good cause to support a request to
remand its application for consideration of the proposed
substitute specimen. Thus, even if we construe applicant’s
submission of its alternative substitute specimen as a
request for remand, such request fails to show good cause
therefor. Furthermore, and as noted above, in addition to
arguing in his brief that the proposed amendment is
untimely, the examining attorney has indicated that the
substitute specimen fails to associate applicant’s DUNES
mark with its casino services and thus fails to show use of
DUNES as a service mark. Thus, the examining attorney has
already indicated that the proposed substitute specimen is
unacceptable. As a result, it would serve no useful
purpose to remand the application to the examining attorney
for consideration thereof.10
In view thereof, applicant’s proposed substitute
specimen, submitted with its brief on appeal, will be given
no further consideration.

10 We note in addition that applicant characterizes its substitute
specimen above as a “sign indicating casino services relating to
designated slot machines,” and that such sign appears identical
to the depiction of the applied-for DUNES mark in the original
specimen, identified as a photograph of a slot machine.
Ser No. 77175007
8
Specimen Submitted with Application
Trademark Rule 2.34 provides, in part, that an
application based on use in commerce must include one
specimen showing how the applicant actually uses the mark
in commerce. See 37 C.F.R. §2.34(a)(1)(iv). Trademark
Rule 2.56(b)(2) specifies that a “service mark specimen
must show the mark as actually used in the sale or
advertising of the services.” See 37 C.F.R. §2.56(b)(2).
Section 45 of the Trademark Act provides, in part, that a
service mark is used in commerce “when it is used or
displayed in the sale or advertising of services and the
services are rendered in commerce....” See 15 U.S.C.
§1127.
To be an acceptable specimen of use of the mark in the
sale or advertising of the identified services, 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 specimens to create this association. See In re
Monograms America Inc., 51 USPQ 1317 (TTAB 1999). It is
not enough that the term alleged to constitute the mark be
used in sale or advertising; there must also be a direct
association between the term and the services. See In re
Compagnie Nationale Air France, 265 F.2d 938, 121 USPQ 460
Ser No. 77175007
9
(CCPA 1959); In re Johnson Controls Inc., 33 USPQ2d 1318
(TTAB 1994); and Peopleware Systems, Inc. v. Peopleware,
Inc., 226 USPQ 320 (TTAB 1985). See also In re Adair, 45
USPQ2d 1211 (TTAB 1997). The mark must be used in such a
manner that it would be readily perceived as identifying
the source of such services. 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). See also TMEP §1301.04 (4th ed. Rev. 2005). Thus,
the issue before us is whether the specimen of record
creates a direct association between applicant’s DUNES mark
and the services specified in the application.
In this case, we first find that the specimen
submitted by applicant with its application displays its
DUNES mark. Inasmuch as applicant applied for its mark in
standard character form, the mark as it appears in stylized
form in its specimen of use is considered to agree with the
mark as it appears in its drawing. See Trademark Rule
2.52(a); 37 C.F.R. §2.52(a). See also TBMP §807.03(e).
However, we further find that applicant’s specimen
fails to show the requisite direct association between the
mark and the activities described thereunder. Cf. In re
Adair, supra; and In re Johnson Controls, Inc., supra.
Specifically, the specimen is a photograph displaying the
Ser No. 77175007
10
mark on slot machines. Clearly, this photograph would be
adequate as a specimen of use of the DUNES mark on slot
machines because it depicts the mark on such goods.
Nonetheless, applicant has not applied to register its mark
on goods, but rather in connection with “casino services.”
Because applicant’s specimen fails to mention the recited
services or otherwise indicate that those services are
being performed, it is not acceptable as evidence of
applicant’s use of the DUNES mark in connection with such
services. We note, in that regard, that there is no
evidence of record that placing a mark on a slot machine is
a typical manner for a casino to use its mark in connection
with casino services. Nor is there evidence of record that
casino services are so inherently unusual that the typical
methods of displaying a service mark therefor, e.g.,
signage or advertisements, would be unavailable.11 Cf. In
re Metriplex, Inc., 23 USPQ2d 1315 (TTAB 1992); and In re
Red Robin Enterprises, Inc., 222 USPQ 911 (TTAB 1984).
Similarly, we are not persuaded by applicant’s
arguments that because the slot machines themselves are not
offered for sale, but rather are present in applicant’s

11 In contrast, the Wikipedia evidence made of record by applicant
includes a photograph of the now demolished Dunes hotel and
casino featuring an enormous sign the height of the hotel itself
prominently displaying DUNES at the top thereof.

Ser No. 77175007
11
casino, patrons thereof necessarily will make a direct
association between the DUNES-marked slot machines and
applicant’s casino services. Applicant appears to argue
that because it is located on the former site of The Dunes
hotel and casino, which operated from 1955 until 1993,12 and
further because it utilizes the mark DUNES on slot machines
in its casino, patrons of its casino will directly
associate the DUNES mark with its casino services and not
simply the slot machines upon which the mark appears.
Notably, applicant did not submit arguments or evidence
that it uses the DUNES mark on signage, advertisements, or
other promotional material in connection with its casino
services. The record instead shows that applicant’s sole
use of DUNES appears to be on slot machines located in its
casino. We further note that evidence submitted by
applicant indicates that slot machines, especially video
slots, often are themed slots featuring graphics and music
associated with entertainers, television programs such as
The Addams Family or I Dream of Jeannie, or game shows such
as Wheel of Fortune.13
Thus, a customer encountering a slot machine
displaying DUNES as depicted above in applicant’s casino,

12 http://en.wikipedia.org/wiki/Dunes_(hotel_and_casino)
13 http://en.wikipedia.org/wiki/Slot_machine
Ser No. 77175007
12
in the apparent absence of any signage or advertising
associating such mark with applicant’s services, must
perceive that DUNES does not simply indicate a slot
machine, possibly themed on the hotel and casino formerly
occupying the site, but rather as a source indicator for
applicant’s casino services. Such an association requires
a customer to recognize DUNES not as a trademark on the
slot machines themselves, but as a service mark pointing to
applicant as the source of the casino services in which the
slot machine is located. We find that this is not a direct
association, as argued by applicant, but requires at least
one additional mental step. It may further be necessary
for customers to be aware of the history of the former
Dunes hotel and casino in order to make this association.
Thus, while there appears to be no question that applicant
utilizes DUNES-marked slot machines in the rendering of its
casino services, applicant’s use of the DUNES mark solely
on such slot machines is insufficient as a specimen showing
the sale or advertising of casino services in commerce as
required by Section 45 of the Trademark Act.
As a result, we find that applicant’s specimen fails
to create a direct association between the DUNES mark and
applicant’s recited casino services. We therefore conclude
that the specimen of record is not adequate to support the
Ser No. 77175007
13
use of the mark in connection with the identified services.
Decision: The refusal to register on the ground that
the specimen is unacceptable evidence of service mark use
in connection with the identified services is affirmed.