Casino Data Systems

Trademark Trial and Appeal Board

Jun 11, 1998

No. 74654198 (T.T.A.B. Jun. 11, 1998)

Paper No. 12
CEW
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 6/11/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Casino Data Systems
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Serial No. 74/654,198
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Bernhard Kreten, Esq. for applicant.
David H. Stine, Trademark Examining Attorney, Law Office 103
(Michael Szoke, Managing Attorney).
____________
Before Simms, Cissel and Walters, Administrative Trademark
Judges.
Opinion by Walters, Administrative Trademark Judge:
Casino Data Systems has filed an application to
register the mark GRAPHIT for “computer programs namely
software for use in a gaming environment for player
tracking.”1
The Trademark Examining Attorney has finally refused
registration under Section 2(d) of the Trademark Act, 15
U.S.C. 1052(d), on the ground that applicant’s mark so

1 Serial No. 74/654,198, in International Class 9, filed March 31, 1995,
based on use in commerce, alleging first use and first use in commerce
as of September 26, 1994.
Serial No. 74/654,198
2
resembles the mark GRAPH IT, previously registered for
computer programs in the form of magnetic tapes,2 that, as
used on or in connection with applicant’s goods, it would be
likely to cause confusion or mistake or to deceive.
Additionally, the Examining Attorney has finally
refused registration on the ground that the specimens of
record, promotional press releases, are unacceptable
evidence of actual trademark use.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register on
both grounds.
We turn first to the question of whether the specimens
herein are acceptable evidence of actual trademark use. A
copy of the top half of the promotional page submitted as
the specimen is shown below.

2 Registration No. 1,259,253 issued November 23, 1983, to Atari, Inc.,
in International Class 9. According to the records of the PTO, the
present owner is Atari Corporation. The registration includes a
disclaimer of GRAPH apart from the mark as a whole. [Section 8 and 15
affidavits accepted and acknowledged, respectively.]
Serial No. 74/654,198
3
Applicant contends that its specimens are acceptable
for the following reasons:
Appellant sells its goods to casino owners and
operators. Appellant’s goods are not the type of
computer software that one would encounter
packaged on the shelf of a computer supply store
or outlet . . . Rather, Appellant’s goods are
directed to an insular group of purchasers. These
purchasers are exposed to Appellant’s goods
through such material as that that was originally
filed with this application. Just because
Appellant’s goods are software programs, it does
not necessarily mean that there are labels, tags,
containers, etc. associated with these goods. The
GraphIT trademark appears on the screens of the
computer display as well on printed material
developed thereby. The GraphIT program is an
interface to Appellant’s Oasis hardware and as
such is sold as a unit. The GraphIT trademark
appears on the screens of the computer display as
well on printed material developed thereby.
Applicant’s specimens are clearly advertising material.
As the Board stated in In re Mediashare Corp., 43 USPQ2d
1304, 1307 (1997):
Such material, generally speaking, is not
acceptable as specimens for goods. This is
because any material whose function is simply to
tell a prospective purchaser about the goods or to
promote the sale of the goods is unacceptable to
support trademark use.
In certain circumstances advertising material may function,
also, as a display associated with the goods, in which case
the material is, essentially, point-of-sale material
designed to catch the attention of prospective purchasers
and serve as an inducement to consummate a sale. In re
Serial No. 74/654,198
4
Bright of America, Inc., 205 USPQ 63 (TTAB 1979). Applicant
states that it sells its goods as part of a hardware system
to a specific class of purchasers rather that selling its
goods “off the shelf” in computer supply stores and the
like. Applicant further discloses that its mark appears on
the computer screen when the program is called up, but no
examples of this are provided.3
On the other hand, applicant offers no explanation of
whether or how its advertising material, submitted as
specimens herein, may be used as a point-of-purchase display
in connection with the sale of its goods. As such, we find
that the specimens of record do not function as displays
associated with applicant’s goods. Therefore, the specimens
are not acceptable to demonstrate trademark use of the mark
GRAPHIT for “computer programs namely software for use in a
gaming environment for player tracking.”
Turning, next, to the issue of likelihood of confusion,
two key considerations in our analysis in this case are the
similarities between the marks and the similarities between
the goods. Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). The marks
herein are identical in pronunciation and connotation.
Registrant’s mark, GRAPH IT, and applicant’s mark, GRAPHIT,

3 Thus, this is not a situation where it is difficult to affix the mark
to the goods or to displays associated therewith. See, In re Griffin
Pollution Control Corp., 517 F.2d 1356, 186 USPQ 166 (CCPA 1975).
Serial No. 74/654,198
5
are substantially similar in appearance, the only difference
being that registrant’s mark appears as two words, whereas
the two words are telescoped into a single word in
applicant’s mark. We find this difference to be
insignificant.
The test for likelihood of confusion is not whether the
marks can be distinguished when subjected to a side-by-side
comparison. Visual Information Institute, Inc. v. Vicon
Industries Inc., 209 USPQ 179 (TTAB 1980). Due to the
consuming public’s fallibility of memory, the emphasis is on
the recollection of the average customer, who normally
retains a general rather than a specific impression of
trademarks or service marks. Spoons Restaurants, Inc. v.
Morrison, Inc., 23 USPQ2d 1735 (TTAB 1991), aff’d. No. 92-
1086 (Fed. Cir. June 5, 1992); and In re Steury Corporation,
189 USPQ 353 (TTAB 1975). Thus, the proper test for
determining the issue of likelihood of confusion is the
similarity of the general commercial impression engendered
by the marks. In this case, we find the overall commercial
impressions of the marks to be substantially similar, if not
identical.
Turning to the goods, we note that while applicant’s
software is limited to “use in a gaming environment for
player tracking”, it is not limited as to the form in which

Serial No. 74/654,198
6
it is sold. Thus, applicant’s software could be sold on
diskettes, CD-ROM or magnetic tape, or pre-loaded on
computer hardware. Like the goods of applicant,
registrant’s goods are software. Registrant’s software, as
identified, is limited in form to magnetic tape, but the
scope of its subject matter is not limited. In this regard,
applicant’s goods fall squarely within the scope of goods
identified in the registration.
Therefore, we conclude that, in view of the substantial
similarity in the commercial impressions of applicant’s
mark, GRAPHIT, and registrant’s mark, GRAPH IT, their
contemporaneous use on the same goods involved in this case
is likely to cause confusion as to the source or sponsorship
of such goods.
Decision: Both the refusal under Section 2(d) of the
Act on the ground of likelihood of confusion and the refusal
on the ground that the specimens of record are not
acceptable evidence of trademark use are affirmed.
R. L. Simms
R. F. Cissel
C. E. Walters
Serial No. 74/654,198
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Administrative Trademark Judges,
Trademark Trial and Appeal Board