Eldorado Resorts LLC

Trademark Trial and Appeal Board

Feb 14, 2002

No. 75876193 (T.T.A.B. Feb. 14, 2002)

2/14/02

Paper No. 11
RFC

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Eldorado Resorts LLC
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Serial No. 75/876,193
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Bonnie Drinkwater of McDonald Carano Wilson McCune Bergin
Frankovich & Hicks LLP for Eldorado Resorts LLC.

Brett Toplin, Trademark Examining Attorney, Law Office 107
(Thomas Lamone, Managing Attorney).
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Before Cissel, Bucher and Drost, Administrative Trademark
Judges.

Opinion by Cissel, Administrative Trademark Judge:
On December 21, 1999, applicant filed the above-
referenced application to register the mark “BUBINGA” on
the Principal Register for “Casino services,” in Class 41,
and “nightclub services and bar and restaurant services,”
in Class 42. The application was based on applicant’s
assertion of its intention to use the mark in commerce in
connection with these services.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/876,193
2
The Examining Attorney refused registration under
Section 2(d) of the Lanham Act on the ground that the mark
applicant seeks to register so resembles the identical mark
“BUBINGA,” which is registered1 for “clothing, namely,
shirts, sweat shirts, pants, sweaters, jackets and shorts;
headwear, namely, hats, beanies and caps; footwear, namely,
tennis shoes, sneakers and boots,” in Class 25, that
confusion would be likely if applicant were to use the mark
it seeks to register in connection with the services
specified in the application.
Submitted in support of the refusal to register were
copies of five third-party federal trademark registrations,
all on the Principal register and all based on use. One
lists both “restaurant services” and “retail store services
in the field of clothing.” Each of the other four third-
party registrations lists both restaurant services and
specific clothing items as the goods and services with
which the particular mark is used. For example, one lists
“restaurant, bar and cocktail lounge services” along with
“clothing, namely, caps, jackets, t-shirts, and shirts.”
Another lists “restaurant and bar services” along with
“clothing, namely t-shirts, pants, shorts and sweat

1 Reg. No. 2,343,555, issued on the Principal Register to Ronald
H. Gilchrist on April 18, 2000.
Ser No. 75/876,193
3
shirts.” The Examining Attorney argued that this evidence
shows that restaurants and bars also market collateral
clothing products under the same marks they use for their
primary services.
Applicant amended the application to allege use of the
mark in commerce on December 24, 1999. Applicant also
argued that confusion with the cited registered mark is not
likely. Included with applicant’s argument were copies of
pages from the website of the owner of the cited
registration. From this evidence, applicant deduced that
registrant uses the mark in connection with skateboards,
skateboard accessories and clothing related to
skateboarding, and concluded that confusion is not likely
because registrant’s goods are not related to the services
applicant renders under the mark it seeks to register, and
because the customers and trade channels for applicant’s
services are not the same as those for registrant’s
skateboard-related apparel.
The Examining Attorney was not persuaded by
applicant’s arguments, and in the second Office Action, the
refusal to register was made final. Applicant timely filed
a Notice of Appeal, and both applicant and the Examining
Attorney filed briefs, but applicant did not request an
oral hearing before this Board.
Ser No. 75/876,193
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Based on careful consideration of the record in this
application and in view of established legal precedent, we
conclude that the Examining Attorney has met his burden of
proof in establishing that confusion is likely.
In the case of In re E.I. DuPont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973), the predecessor to our
primary reviewing court set out the factors to be
considered in determining whether confusion is likely.
Chief among those factors are the similarity of the marks
and the similarity of the goods or services as set forth in
the application and the cited registration, respectively.
In the case at hand, the record before us shows that
the marks are virtually the same, and services specified in
the application are related to the goods set forth in the
cited registration in such a way that the use of identical
marks in connection with both is likely to cause confusion.
When the marks in question are the same, the goods or
services with which they are used ordinarily do not have to
be as closely related in order to find confusion likely as
would be a case if there were differences between the
marks. Amcor, Inc. v. Amcor Industries, Inc., 210 USPQ 70
(TTAB 1981). In the instant case, however, the record
establishes that the services set forth in the application
and the goods identified in the registration can be
Ser No. 75/876,193
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expected to emanate from a common source when the same mark
is used in connection with both. The third-party
registrations made of record by the Examining Attorney show
that restaurant and bar businesses have registered their
marks for a variety of clothing items. The third-party
registrations made of record by the Examining Attorney have
probative value to the extent that they serve to suggest
that such goods and services emanate from the same source.
See: In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB
1993); In re Mucky Duck Co., 6 USPQ2d 1467 (TTAB 1988).
Applicant acknowleges (appeal brief, p.5) that some
restaurants and night clubs sell clothing in connection
with their services. That casinos also do so is an equally
reasonable conclusion. In the instant case, just as in
Mucky Duck, supra., the fact that the mark is “unique and
memorable” bolsters the likelihood of confusion. Plainly,
the use of the identical mark in connection with these
related goods and services is likely to cause confusion.
Applicant makes several unpersuasive arguments to the
contrary. One is that the marks create different
commercial impressions because the registered mark is shown
in highly stylized form on registrant’s website. It is
well settled, however, that unless the registration
presents the mark of the registrant in special form, the
Ser No. 75/876,193
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rights of the registrant are not limited to any particular
presentation of the registered mark. In the case at hand,
the cited registration shows “BUBINGA” in all capital
letters in an ordinary type font which is very similar to
the presentation of applicant’s mark in the drawing
applicant submitted with the application. Applicant’s mark
is virtually identical to the registered mark,
notwithstanding the fact that registrant may use his mark
in a very stylized form.
Another unpersuasive argument made by applicant is
that we should consider the clothing items specified in the
registration to relate to skateboards, skateboard
accessories and clothing related to skateboarding. As the
Examining Attorney points out, however, whether confusion
is likely must be determined based on the goods or services
the as they are identified in the application and the cited
registration. Canadian Imperial Bank of Commerce v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir. 1987).
Restrictions or limitations which are not reflected in the
registration or application cannot be considered. Toys “R”
Us, Inc. v. Lamps R Us, 219 USPQ 340 (TTAB 1983).
Applicant’s argument that confusion is not likely
because there is no evidence that actual confusion has
occurred is also not well taken. Such evidence is
Ser No. 75/876,193
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notoriously difficult to obtain, and is not required in
order to sustain the Examining Attorney’s burden of
establishing that confusion is likely. We have no idea
whether there has even been a realistic opportunity for
confusion to have occurred. Cunningham v. Laser Golf
Corp., 222 F.3rd 943, 55 USPQ2d 1842, (Fed. Cir. 2000);
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768 (TTAB
1992).
In summary, the third-party registrations made of
record by the Examining Attorney establish that consumers
of applicant’s “BUBINGA” restaurant and bar services have a
reasonable basis upon which to assume that the use of the
same distinctive, arbitrary mark in connection with the
clothing items set forth in the cited registration is an
indication that both the goods and services emanate from
the same source. If we had any doubt as to this
conclusion, such doubt would necessarily be resolved in
favor of the registrant and prior user. J & J Snack Foods
v. McDonalds Corp., 932 F.2d 1460, 18 USPQ2d 1889 (Fed.
Cir. 1991).
Accordingly, the refusal to register based on Section
2(d) the Lanham Act is affirmed.