Casino Data Systems

Trademark Trial and Appeal Board

Jul 28, 1998

No. 74621724 (T.T.A.B. Jul. 28, 1998)

Hearing: Paper No. 17
October 21, 1997 RLS/KRD
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 7/28/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Casino Data Systems
________
Serial No. 74/621,724
_______
Bernhard Kreten for Casino Data Systems.
David Stine, Trademark Examining Attorney, Law Office 103
(Katherine Erskine, Managing Attorney).
_______
Before Simms, Hohein and Hairston, Administrative Trademark
Judges.
Opinion by Simms, Administrative Trademark Judge:
Casino Data Systems (applicant), a Nevada corporation,
has appealed from the final refusal of the Trademark
Examining Attorney to register the mark OASIS for “computer
hardware for use in a gaming environment, namely a network
controller for player tracking in a casino.”1 The Examining
Attorney has refused registration under Section 2(d) of the
Act, 15 USC §1052(d), on the basis of two registrations,

1 Application Serial No. 74/621,724, filed January 17, 1995,
based upon use in commerce since July 1, 1991.
Ser No. 74/621,724
2
both for the mark OASIS: Registration No. 1,456,289, issued
September 8, 1987, Sections 8 and 15 affidavit filed, for
computer programs and accompanying instruction manuals sold
as a unit therewith; and Registration No. 1,803,656, issued
November 9, 1993, for electronic gaming machines. The
Examining Attorney and applicant have submitted briefs, and
an oral argument was held.
The Refusal with Respect to Registration No. 1,456,289
With respect to this cited registration for computer
programs and instruction manuals, applicant argues that
third-party software, including registrant’s computer
programs, cannot be used with applicant’s computer hardware
because it is not compatible. Applicant argues that, even
if registrant’s computer programs were compatible,
applicant’s goods are complex and expensive computer
hardware sold to a “niche” market, i.e., casino managers and
owners, who will not confuse the source of applicant’s
network controllers for player tracking in a casino and
registrant’s computer programs.
Where a registration covering computer programs
generally contains no further restriction with respect to
the nature of the goods or the channels of trade in which
those computer programs travel, we must assume that those
computer programs cover a wide variety of applications and
travel in all normal channels of trade for those goods. In
Ser No. 74/621,724
3
re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). Accordingly,
and because there is no specific or mutually exclusive
limitation in the description of goods in the cited
registration, we must assume, for our purposes, that
registrant’s computer programs include those designed to
track players in a gaming environment. Accordingly, casino
purchasing personnel, assumed to be familiar with OASIS
computer programs for use in the gaming environment, who
then encounter applicant’s network controllers for use in
the same environment, sold under the identical mark, are
likely to believe that these goods emanate from or are
sponsored by the same source. Compare In re Compagnie
Internationale Pour L’Informatique-Cii Honeywell Bull, 223
USPQ 363 (TTAB 1984) and In re Graphics Technology Corp.,
222 USPQ 179 (TTAB 1984).
In this connection, we note that applicant is not
without remedy. Where the goods in a registration are
broadly described, an applicant may seek to restrict the
scope of the description by way of a petition to partially
cancel or restrict that registration. See Section 18 of the
Act, 15 USC §1068, and Eurostar Inc. v. “Euro-Star”
Reitmoden GmbH & Co. KG, 34 USPQ2d 1266 (TTAB 1994).
The Refusal with Respect to Registration No. 1,803,656
With respect to this refusal on the basis of the
registered mark OASIS for electronic gaming machines,
Ser No. 74/621,724
4
applicant admits that, while these gaming machines and
applicant’s network controllers may be purchased by the same
casino managers and owners (brief, 5), applicant
nevertheless argues that these goods are specifically
different, would be used by different people and, more
importantly, the common purchasers (casino managers and
owners) are “an insular, sophisticated group” in the gaming
industry who would not likely be confused as to the source
of these products.
The sophisticated purchasers to whom
Appellant’s hardware is directed would
not be confused between the source of
origin of a network controller used for
player tracking which directly effects
casino productivity and profitability
and an electronic gaming machine which
is exposed and entices customers to play
one slot machine in favor of another.
Thus, the electronic gaming machines
recited in the relied upon registration
are exposed to patrons of the casino,
and the purchaser (casino owner or
manager) of the gaming machine will have
bought hundreds of slot machines, but
only one network controller. The
consumer who utilizes the electronic
gaming machine is never exposed to
Appellant’s mark…
… Prior to purchase, Appellant’s
consumers deliberate and are exposed to
illustrative demonstrations in the
intended casino environment. These
types of distinctions are the hallmark
of registrable trademarks under the law.
Appellant’s goods are specifically
directed to buyers in the gaming
industry. These buyers are professional
buyers who are not likely to be confused
compared to ordinary consumers.
Ser No. 74/621,724
5
Applicant’s brief, 6, 7. Applicant also notes that there
have been no instances of actual confusion involving
registrant’s mark OASIS for electronic gaming machines and
applicant’s mark for its goods.
We have carefully considered applicant’s arguments but
believe that the sale of applicant’s OASIS computer hardware
used in the gaming environment and registrant’s OASIS
electronic gaming machines is likely to cause confusion.
Applicant’s network controllers are closely related and
complementary products to registrant’s gaming machines.
Applicant’s goods may be used to monitor electronic gaming
machines. Indeed, registrant’s gaming machines and
applicant’s network controllers are goods which may be
components of an electronic casino player tracking system.
While it is true that registrant’s gaming machines may
actually be used by different persons (casino patrons),
applicant has admitted that common purchasers may be exposed
to both marks. While those who acquire equipment for
casinos are undoubtedly relatively sophisticated
individuals, we believe that even those individuals may be
confused when such closely related goods as gaming machines
and network controllers for player tracking in a casino are
sold under the identical mark. Those individuals may well
assume that the electronic gaming machines and applicant’s
network controllers are designed to be part of a single
Ser No. 74/621,724
6
system, or are otherwise produced by the same entity. In
any event, we believe that these goods are so closely
related that, when sold under the identical mark, confusion
is likely.
Decision: The refusal of registration is affirmed as
to both cited registrations.
R. L. Simms
G. D. Hohein
P. T. Hairston
Administrative Trademark
Judges,
Trademark Trial and
Appeal Board