Jack B. Binion

Trademark Trial and Appeal Board

Dec 23, 2009

No. 76590702 (T.T.A.B. Dec. 23, 2009)

Mailed: 12/23/09

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jack B. Binion
________

Serial Nos. 76590702 and 76590729
_______

Sana Hakim and Kathryn Starshak of K&L Gates for Jack B.
Binion.

Evelyn Bradley, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Quinn, Walters and Rogers, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

Jack B. Binion filed, on May 6, 2004, intent–to-use
applications to register the marks BINION (Serial No.
76590729) and BINION’S (Serial No. 76590702) (both in
standard character form) for “casino and gaming services”
in Class 41, and “hotel and bar services” in Class 43.1
The trademark examining attorney refused registration

1 The recitation of services in each application originally
included “restaurant services.” In response to the Section 2(d)
refusal discussed herein, applicant deleted these services from
the recitation.
THIS OPINION
IS A PRECEDENT OF THE
TTAB
Ser. No. 76590702 and 76590729
2
in each application on the following grounds: 1) that
applicant’s mark, when used in connection with applicant’s
services, so resembles the previously registered mark
BINION’S ROADHOUSE (in typed form) (“ROADHOUSE” disclaimed)
for “restaurant services”2 as to be likely to cause
confusion under Section 2(d) of the Trademark Act, 15
U.S.C. §1052(d); 2) that applicant’s mark is primarily
merely a surname under Section 2(e)(4) of the Trademark
Act, 15 U.S.C. §1052(e)(4); and 3) in the event that the
determination that applicant’s mark is primarily merely a
surname is affirmed, then applicant’s evidence of acquired
distinctiveness under Section 2(f) of the Trademark Act, 15
U.S.C. §1052(f), is insufficient to establish
registrability on the Principal Register.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs.
The appeals involve common issues of law and fact.
Further, the records are essentially identical.
Accordingly, we decide the appeals in this single opinion.
Before turning to the merits of the refusals, an
evidentiary matter requires our attention. Applicant
submitted, for the first time with each supplemental appeal

2 Registration No. 1996212, issued August 20, 1996; renewed.
Ser. No. 76590702 and 76590729
3
brief, Exhibits A, B and C. Exhibits A and B comprise TARR
printouts of third-party registrations, and Exhibit C is an
excerpt retrieved from registrant’s web site. The
examining attorney, in her appeal briefs, objected to this
evidence on the ground that it is untimely submitted.
Trademark Rule 2.142(d) provides that the record in
the application should be complete prior to the filing of
an appeal, and that the Board will ordinarily not consider
additional evidence after the appeal is filed.
Accordingly, given applicant’s untimely submission of
Exhibits A, B and C with his supplemental appeal briefs,
the examining attorney’s objection is sustained, and we
have not considered this evidence in making our decision.

Likelihood of Confusion
As noted above, a previously issued registration of
the mark BINION’S ROADHOUSE for “restaurant services” has
been cited as a Section 2(d) bar against registration of
applicant’s marks BINION and BINION’S for “casino and
gaming services” and “hotel and bar services.”
The thrust of applicant’s argument is that he owns
three registrations of marks comprising JACK BINION or JACK
BINION’S (one in typed form, the other two in special form)
for “restaurant services,” and that these registrations
Ser. No. 76590702 and 76590729
4
issued over the registration now cited against the two
present applications. Applicant claims that his prior
registrations have peacefully coexisted with the cited
registration for a number of years. In support of his
arguments, applicant submitted copies of his prior
registrations.
The examining attorney maintains that the marks are
similar and that the services are related. Further, the
examining attorney finds that applicant’s ownership of
three prior registrations for marks different from the two
marks involved herein does not warrant issuance of the
registrations presently sought. In support of her refusal,
the examining attorney submitted several third-party
registrations showing that the same entities have
registered the same mark for casino, gaming, hotel, bar
and/or restaurant services. The examining attorney also
introduced excerpts from third-party web sites showing that
the same entities that offer casino and hotel services also
offer restaurant services.
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
Ser. No. 76590702 and 76590729
5
1357, 177 USPQ 563 (CCPA 1973). See also In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed.
Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to a consideration of the marks, we must
compare the marks in their entireties as to appearance,
sound, connotation and commercial impression to determine
the similarity or dissimilarity between them. Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). The
test, under the first du Pont factor, is not whether the
marks can be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the services offered
under the respective marks is likely to result. The focus
is on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
Ser. No. 76590702 and 76590729
6
With respect to registrant’s mark BINION’S ROADHOUSE,
it is well settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. In re National
Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) (“There is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.”). See Hewlett-Packard Co. v. Packard Press,
Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002).
For example, in the past merely descriptive matter that is
disclaimed has been accorded subordinate status relative to
the more distinctive portions of a mark. In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34
(Fed. Cir. 1997). In the cited registration, registrant
disclaimed the word ROADHOUSE. Given the merely
descriptive or generic nature of this word in registrant’s
mark, registrant’s mark is clearly dominated by the term
BINION’S. This dominant portion of the restaurant’s full
name is the term most likely to be remembered by consumers,
and will be used in calling for the services or otherwise
Ser. No. 76590702 and 76590729
7
in referring to registrant’s restaurant. Although we have
not disregarded the word ROADHOUSE in registrant’s mark in
our comparison of the respective marks as a whole, it is
entitled to less weight than the term “BINION’S” because
merely descriptive or generic words are accorded less
weight in the likelihood of confusion analysis. See In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004).
The dominant portion of registrant’s mark, BINION’S,
is identical to the entirety of applicant’s mark BINION’S.
Further, the dominant portion of registrant’s mark is
virtually identical to applicant’s mark BINION, differing
only by the concluding apostrophe “S” that may be viewed as
the possessive form of BINION. The absence of the
possessive form in applicant’s mark BINION has little, if
any, significance for consumers in distinguishing it from
the cited mark. See, e.g., Wilson v. Delaunay, 245 F.2d
877, 114 USPQ 339, 341 (CCPA 1957); and Georgia-Southern
Oil Inc. v. Richardson, 16 USPQ2d 1723, 1725 (TTAB 1990).
So as to be clear, we must do more than just compare
the dominant portion of the registered mark with
applicant’s marks; it is necessary that we compare the
registrant’s mark as a whole. In comparing each of
applicant’s marks BINION and BINION’S with registrant’s
Ser. No. 76590702 and 76590729
8
mark BINION’S ROADHOUSE, we find that the marks are similar
in sound, appearance and meaning. Further, given these
similarities, we find that the marks engender very similar
overall commercial impressions.
The similarity between the marks is a factor that
weighs in favor of finding a likelihood of confusion.
Insofar as the services are concerned, it is not
necessary that the respective services be competitive, or
even that they move in the same channels of trade to
support a holding of likelihood of confusion. It is
sufficient that the respective services are related in some
manner, and/or that the conditions and activities
surrounding the marketing of the services are such that
they would or could be encountered by the same persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originated from the same producer. In re Melville Corp.,
18 USPQ2d 1386 (TTAB 1991). The issue, of course, is not
whether purchasers would confuse the services, but rather
whether there is a likelihood of confusion as to the source
of the services. In re Rexel Inc., 223 USPQ 830 (TTAB
1984).
The comparison at issue here is between registrant’s
“restaurant services” and applicant’s “casino and gaming
Ser. No. 76590702 and 76590729
9
services” and “hotel and bar services.” At the outset of
consideration of this factor we note that applicant’s
original recitation of services included “restaurant
services”; in response to the Section 2(d) refusal,
applicant deleted these services from his recitation.
Further, registrant’s services are not limited and thus
must be construed to encompass all types of restaurant
services, including stand-alone restaurants as well as
restaurants that may be located within a hotel or casino.
See In re Smith & Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
The examining attorney and applicant have introduced
competing third-party registration evidence in support of
their opposing arguments regarding the similarity between
the services. The examining attorney submitted ten use-
based registrations showing that each registrant adopted a
single mark for both restaurant services and at least one
of the services listed in applicant’s applications (casino,
gaming, hotel or bar). Applicant countered with
registrations showing that different entities have
registered similar marks for both types of services.
Given the nature of the services at issue, it is not
surprising that there are numerous third-party
registrations showing that each registrant adopted a single
Ser. No. 76590702 and 76590729
10
mark for casino, gaming, hotel, restaurant and bar
services, as for example, PARIS and BEVERTAINER.
Applicant introduced two instances wherein
registrations issued to different entities for arguably
similar marks, with one registration covering, for example,
restaurant services, and the other registration covering
casino or hotel services.3
We find that the third-party registration evidence, on
balance, weighs in favor of the examining attorney’s
position. “Third-party registrations which cover a number
of differing goods and/or services, and which are based on
use in commerce, although not evidence that the marks shown
therein are in use on a commercial scale or that the public
is familiar with them, may nevertheless have some probative
value to the extent that they may serve to suggest that
such goods or services are of a type which may emanate from
a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir.
1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993).

3 Applicant proffered two additional instances wherein an
application was “allowed” over an existing registration. The
applications are evidence of nothing more than that they were
filed, and there is no indication that either application matured
into a registration; the Board does not take judicial notice of
status changes in third-party applications made of record.
Ser. No. 76590702 and 76590729
11
Further, casinos, hotels, bars and restaurants are
often housed under the same roof. For example, a person
visiting a hotel in Las Vegas in many cases would be able
to spend the night, gamble, eat and drink in the same
establishment. As evidenced by applicant’s original
recitation of services that included “restaurant services,”
coupled with the inclusion of such services in his prior
registrations, it is clear that there is a close
relationship between, on the one hand, casino, gaming,
hotel and bar services and, on the other, restaurant
services. In an interview with Mr. Binion, he even stated
that one of the things that makes his Horseshoe properties
special is “[w]e have nice rooms, we have real good food,
we give you a better gamble...”; and that his properties
“have such a strong commitment to food and beverage”
because “good food is very important to the customer.”
(Casino Player (Nov. 2002)). Another article about
applicant indicates that “Jack knows the power of food--I
know there are some casino operators that have quality
food, but no one, I believe, uses food as a real marketing
tool as well as Jack Binion. He eats in his own buffet and
never cuts corners on quality. He understands the need for
a first class, but comfortable steakhouse to feed hungry
table game players.” (casinojournal.com (Oct. 2003)).
Ser. No. 76590702 and 76590729
12
Lest there be any doubt on this obvious point, the
examining attorney submitted Internet evidence retrieved
from several third-party web sites. In each case, the same
establishment offers casino, hotel, bar and restaurant
services under the same mark (see, e.g., Bellagio and Hard
Rock Hotel located in Las Vegas). Accordingly, although
applicant deleted “restaurant services” from the
applications’ recitations, the remaining casino, gaming,
hotel and bar services are closely related to registrant’s
restaurant services.
As pointed out by the examining attorney, and not
disputed by applicant, applicant’s and registrant’s
services are purchased by the same classes of consumers,
including ordinary ones who, in many instances, would
employ nothing more than ordinary care in making their
purchasing decisions about where to gamble, lodge, eat or
drink.
Accordingly, the du Pont factors bearing on the
similarity between the services weigh in favor of a finding
of likelihood of confusion.
We also consider the thirteenth du Pont factor in this
case, namely, any other established fact probative of the
effect of use. Applicant owns the following prior
Ser. No. 76590702 and 76590729
13
registrations: JACK BINION’S (typed form) for “restaurant
services”;4

for “casino, hotel, restaurant and bar services”;5 and

for “restaurant services.”6 Applicant asserts that
“applicant’s prior registrations were approved for
registration despite the existence of the cited mark,” and
that “in this instance, there is even less a risk of a
likelihood of confusion between the BINION [and BINION’S]
mark[s] because the subject application[s] do not cover
‘restaurant services,’ the only services covered by the
cited mark.” (Brief, p. 6). Applicant also states that
his prior marks have coexisted with the cited mark for
years.

4 Registration No. 2150944, issued April 14, 1998; renewed.
5 Registration No. 2444446, issued April 17, 2001; Section 8
affidavit accepted, Section 15 affidavit acknowledged.
6 Registration No. 2607096, issued August 13, 2002; Section 8
affidavit accepted, Section 15 acknowledged.
Ser. No. 76590702 and 76590729
14
The coexistence of the cited registration with
applicant’s three prior registrations, all covering
restaurant services, does not compel a different result.
To the extent that applicant is making an equitable
estoppel argument, it is not well taken. Although the
present applications do not list “restaurant services,”
these applications attempt to register marks that are not
the same as the registered marks, but rather are marks
actually closer to the registered mark than are any of
applicant’s three previously registered marks. Further, as
discussed earlier, the services are related. As often
stated, each case must be decided on its own facts, and
occasionally an applicant with registrations for the same
or very similar marks may be unable to obtain subsequent
registrations. See In re Sunmarks Inc., 32 USPQ2d 1470,
1472 (TTAB 1994) (“We readily admit that in the present
case it is troublesome to refuse registration when
applicant already owns registrations for the identical mark
for the same and/or similar goods. We find, however, that
when this evidence is balanced against the other du Pont
factors, the scales remain tipped in favor of affirming the
refusal here.”). See also In re Nett Designs Inc., 236
F.3d 139, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001) (“Even if
prior registrations had some characteristics similar to
Ser. No. 76590702 and 76590729
15
[applicant’s] application, the PTO’s allowance of such
prior registrations does not bind the Board or this
court.”); and In re Davey Products Pty Ltd., 92 USPQ2d 1198
(TTAB 2009). Further, any suggestion that there has been
no actual confusion between the marks, based on the
coexistence of applicant’s previously issued registrations
and the cited registration, is entitled to little probative
value in the context of this ex parte appeal. In re
Majestic Distilling Co., Inc., 65 USPQ2d at 1205.
Applicant also states that registrant operates a
single restaurant located in Hendersonville, North
Carolina, but registrant owns a geographically unrestricted
registration and, thus, registrant has nationwide rights in
its registered mark. Applicant asserts that the registered
mark is often used with a design, but we must consider
registrant’s mark as registered, and the registered mark
does not include a design. Simply put, the law is clear
that these points are entirely irrelevant to our likelihood
of confusion analysis.
Lastly, to the extent that any of applicant’s points
raises a doubt about likelihood of confusion, that doubt is
required to be resolved in favor of the prior registrant.
In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988); and In re Martin’s Famous Pastry
Ser. No. 76590702 and 76590729
16
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir.
1984).
The refusal to register under Section 2(d) on the
ground of likelihood of confusion is affirmed.
Surname
The examining attorney maintains that BINION and
BINION’S are primarily merely surnames. The examining
attorney contends that she has made a prima facie case, and
that the burden falls on applicant to rebut this showing.
More specifically, she argues that applicant has failed to
support his argument that relevant consumers would regard
Mr. Binion as a “historical figure” as contemplated by case
law such that “Binion” is no longer primarily a surname.
In support of the refusal, the examining attorney submitted
evidence retrieved from the NEXIS database, and dictionary
evidence.
Applicant contends that he has sufficiently rebutted
the examining attorney’s showing with evidence “of the
historical significance of the term BINION in the gaming
industry such that the primary meaning of the term BINION
as applied to Applicant’s services would not be that of a
surname.” (Brief, p. 6). Applicant points to the “renown”
of the “Binion” name in the gaming industry, relying on a
Ser. No. 76590702 and 76590729
17
variety of references to Mr. Binion and other family
members in the printed press and on the Internet.
The USPTO has the burden of establishing a prima facie
case that a term is primarily merely a surname. In re
Etablissements Darty et Fils, 759 F.2d 15, 225 USPQ 652,
653 (Fed. Cir. 1985). Moreover, “[t]he question of whether
a word sought to be registered is primarily merely a
surname within the meaning of the statute can only be
resolved on a case by case basis,” taking into account a
number of various factual considerations. Id. There are
five accepted factors to be considered in the analysis:
(1) Is the word a common or rarely used surname?
(2) Does anyone connected with the applicant have that
surname?
(3) Does the word have meaning other than as a surname?
(4) Does the word look and sound like a surname?
(5) Is the word presented in use in a stylized form
distinctive enough to create a separate non-surname
impression?
In re Benthin Management GmbH, 37 USPQ2d 1332, 1333-34
(TTAB 1995).
With respect to the first factor, the examining
attorney introduced the results of a search of “Binion”
using the Lexis/Nexis USFIND database. This search of a
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18
nationwide telephone directory shows 1416 listings of the
surname “Binion.” Thus, while hardly a common surname,
“Binion” is not so rare that it would not be recognized as
a surname. See In re Etablissements Darty et Fils, 225
USPQ at 653; and In re Rebo High Definition Studio Inc., 15
USPQ2d 1314 (TTAB 1990). Regardless of the rarity of the
surname, the test is whether the primary significance of
the term to the purchasing public is that of a surname.
The second factor is obvious; applicant’s name is
“Jack Binion.”
The record fails to show that “Binion” has any meaning
other than as a surname. On this third factor, the
examining attorney submitted a dictionary excerpt showing
the absence of an entry for “Binion.”
The fourth factor, whether “Binion” has the look and
feel of a surname, is very subjective. We find that
“Binion” looks and sounds like a surname. The record shows
that such term has no readily recognized meaning other than
its surname significance. Further, on its face, “Binion”
does not look like a coined term or an acronym, nor like
anything else but a surname. This is especially the case
with the possessive form of the term, “Binion’s,” that
serves to reinforce its impression as a surname.
Ser. No. 76590702 and 76590729
19
Because the marks are presented in standard character
form, the fifth factor is not relevant to our analysis.
We find that the examining attorney established a
prima facie case that BINION is primarily merely a surname.
As to the mark in possessive form, BINION’S, the surname
significance of a term is not diminished by the fact that
the term is presented in its possessive form. See In re
Woolley’s Petite Suites, 18 USPQ2d 1810 (TTAB 1991). See
also TMEP §1211.01(b)(v) (6th ed., rev. 1, 2009).
As noted above, applicant attempted to overcome the
surname significance by arguing that Mr. Binion is a
historical figure. A term with surname significance may
not be primarily merely a surname if that term also
identifies a historical place or person. See In re Pyro-
Spectaculars, Inc., 63 USPQ2d 2022, 2024 (TTAB 2002).
Evidence that an individual is famous in a particular field
does not necessarily establish that the person is a
historical figure. In re Thermo LabSystems Inc., 85 USPQ2d
1285 (TTAB 2007). We do not find that Mr. Binion’s
personal history is in any way so extraordinary that he
warrants treatment under the “historical person” exception
to the surname refusal. That is to say, although the
evidence of record shows that Mr. Binion has played a
significant role in the gaming industry in Las Vegas, his
Ser. No. 76590702 and 76590729
20
notoriety in this regard is not so remarkable or so
significant that he is a historical figure as contemplated
by the case law. Id. at 1289.
The refusal to register under Section 2(e)(4) because
the terms BINION and BINION’S each are primarily merely a
surname is affirmed.
Acquired Distinctiveness
Although applicant did not originally couch his
Section 2(f) claim in the alternative when he continued to
argue against the surname refusal, the examination history
reveals that applicant and the examining attorney
essentially treated the claim as an alternative one. That
is, the examining attorney did not treat, nor did applicant
intend his claim of acquired distinctiveness as a
concession that the matter sought to be registered is not
inherently distinctive. See TMEP §1212.02(c) (6th ed. rev.
October 2009). Because of the way the issue was handled by
applicant and the examining attorney, we will consider the
claim of acquired distinctiveness to be one made in the
alternative. Cf. TMEP §1212.02(b) (6th ed. rev. October
2009).
As noted earlier, the involved applications are based
on an intent to use each mark in commerce as provided under
Section 1(b). Section 2(f) is limited by its terms to “a
Ser. No. 76590702 and 76590729
21
mark used by the applicant.” A claim of distinctiveness
under Section 2(f) is normally not filed in a Section 1(b)
application before the applicant files an amendment to
allege use or a statement of use, because a claim of
acquired distinctiveness, by definition, requires prior
use. However, an intent-to-use applicant that has used the
same mark on related goods or services may file a claim of
acquired distinctiveness under Section 2(f) before filing
an amendment to allege use or statement of use, if the
applicant can establish that, as a result of the
applicant’s use of the mark on other goods or services, the
mark has become distinctive of the goods or services in the
intent-to-use application, and that this previously created
distinctiveness will transfer to the goods and services in
the intent-to-use application when use in commerce begins.
In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807, 1812 (Fed. Cir. 2001).
The Board has set forth the following requirements for
showing that a mark in an intent-to-use application has
acquired distinctiveness: First, applicant must establish,
through the appropriate submission, the acquired
distinctiveness of the same mark in connection with
specified other goods and/or services in connection with
which the mark is in use in commerce. To satisfy the first
Ser. No. 76590702 and 76590729
22
element, the applicant must establish acquired
distinctiveness as to the other goods and/or services by
appropriate evidence, such as ownership of a prior
registration for the same mark for related goods and/or
services, a prima facie showing of acquired distinctiveness
based on five years use of the same mark with related goods
and/or services, or actual evidence of acquired
distinctiveness for the same mark with respect to the other
goods and/or services. Second, applicant must establish,
through submission of relevant evidence rather than mere
conjecture, a sufficient relationship between the goods
and/or services in connection with which the mark has
acquired distinctiveness and the goods and/or services
recited in the intent-to-use application to warrant the
conclusion that the previously created distinctiveness will
transfer to the goods and/or services in the application
upon use. To satisfy this element, applicant must show the
extent to which the goods and/or services in the intent-to-
use application are related to the goods and/or services in
connection with which the mark is distinctive, and that
there is a strong likelihood that the mark’s established
trademark function will transfer to the related goods
and/or services when use in commerce occurs. In re Rogers,
Ser. No. 76590702 and 76590729
23
53 USPQ2d 1741, 1744 (TTAB 1999). See generally TMEP
§1212.09(a) (6th ed. rev. October 2009).
In addition to his reliance on the three previously
issued registrations, Mr. Binion claims that he is a
nationally recognized leader in the gaming industry and,
consequently, that the name “Binion” has become synonymous
with the gaming industry. According to applicant, the
legacy of the Binion name began in 1951 when applicant’s
father, Benny Binion, opened Binion’s Horseshoe Casino in
Las Vegas. Applicant was inducted into the Gaming Hall of
Fame in 2004, coming fourteen years after his father’s
induction. Applicant has owned three casinos, and his sale
of the Horseshoe Casino to Harrah’s Entertainment was one
of the largest casino transactions in history, netting Mr.
Binion over one billion dollars. Due to extensive press
coverage, applicant asserts that the consuming public
primarily associates the terms BINION and BINION’S with
applicant’s services.
The examining attorney’s argument against registration
under Section 2(f) is as follows:
The evidence of record clearly shows
that the Binion family is very well
known in the gaming field. Jack is
apparently a “legend in his field” as
indicated in some of the evidentiary
items, as is founder Benny. However,
virtually all occurrences of the Binion
Ser. No. 76590702 and 76590729
24
name referring to Jack or Benny are
shown as full names, or as “the Binion
family,” not simply the surname,
Binion. Both Jack Binion and Benny
Binion are in the Gaming Hall of Fame
and have numerous media articles
referring to them by name and their
fame in the gaming industry. However,
all this evidence is insufficient to
show that BINION [or BINION’S] by
itself is functioning as a mark for
related services and that applicant can
claim proprietary rights for 2(f)
purposes. It is the full names of Jack
Binion and Benny Binion that are
famous, not “Binion” by itself.
Accordingly, this evidence cannot be
used to show acquired distinctiveness
in this application.

(Brief, p. 21).
We find that the evidence of record does not establish
that the marks BINION and BINION’S, not yet used by
applicant as a trademark or service mark, have acquired
distinctiveness under Section 2(f).
Considering first applicant’s registration evidence,
applicant seeks to register the marks BINION and BINION’S
(in standard character form) for “casino and gaming
services” and “hotel and bar services.” Applicant already
owns registrations of the marks JACK BINION’S (in typed
form, issued April 14, 1998, alleging first use dates of
December 31, 1996), and JACK BINION’S (in special form in
the manner of a signature, issued August 13, 2002, alleging
dates of first use of November 15, 2000), both for
Ser. No. 76590702 and 76590729
25
“restaurant services”; and JACK BINION (in special form in
the manner of a signature, issued April 17, 2001, alleging
first use dates of October 19, 1997), for “casino, hotel,
restaurant and bar services.”
The services involved herein are identical or closely
related to the services recited in the previously issued
registrations; thus, the applicant has met the second
requirement for showing that a mark in an intent-to-use
application has acquired distinctiveness. The problem for
applicant, however, is that he has failed to meet the first
requirement to show that his applied-for marks have
acquired distinctiveness, namely that the involved marks
BINION and BINION’S are the “same” marks as the previously
registered marks JACK BINION and JACK BINION’S. See TMEP
§1212.04(b) (6th ed., rev. 1, 2009). A proposed mark is the
“same mark as a previously registered mark for the purpose
of 37 C.F.R. §2.41(b)” if it is the “legal equivalent” of
such a mark. A mark is the legal equivalent of another if
it creates the same, continuing commercial impression such
that the consumer would consider them both the same mark.
In re Dial-A-Mattress Operating Corp., 57 USPQ2d at 1812.
Simply put, the marks BINION and BINION’S intended to be
used are not the legal equivalents of the registered marks
JACK BINION and JACK BINION’S.
Ser. No. 76590702 and 76590729
26
Accordingly, applicant’s ownership of the prior
registrations does not establish acquired distinctiveness
of the marks now sought to be registered. See TMEP
§1212.04 (6th ed., rev. 1, 2009).
As indicated earlier, applicant also introduced
several articles as evidence of the publicity about Mr.
Binion and his family. The record includes numerous
articles in gaming trade publications and on the Internet
that refer to the Binion family and its significant role in
the growth of the gaming industry in Las Vegas; as
acknowledged by the examining attorney and borne out by the
evidence, Jack Binion and other family members are
“legends” in the Las Vegas gaming industry, and they have
merited induction into the Gaming Hall of Fame. When Benny
Binion passed away in 1989, the Horseshoe remained a family
business, with Jack Binion in charge. In 1998, after a
legal battle, Jack Binion surrendered the presidency of the
Horseshoe to his sister, Becky Binion. In later years, Mr.
Binion expanded his casinos to Louisiana, Mississippi,
Illinois and Indiana. Jack Binion has been called “The
Godfather of Poker,” based on his involvement in starting
the World Series of Poker in Las Vegas; the Jack Binion
World Poker Open followed. One of the Horseshoe’s most
successful promotions has been the “Who Wants To Be a
Ser. No. 76590702 and 76590729
27
Binionaire” slot machine. At the website “horseshoe.com,”
in an excerpt about applicant, it is stated that “[t]here
are few names more synonymous with the casino industry than
the Binion name.” Mr. Binion was featured as the cover
story in Casino Player (Nov. 2002): “Jack Binion The Man,
The Myth & The Magic” (“the name ‘Binion’ evokes emotion in
the gaming world”).
The purpose behind Section 2(e)(4) is to keep surnames
available for people who wish to use their own surnames in
their businesses, in the same manner that merely
descriptive terms are prohibited from registration because
competitors should be able to use a descriptive term to
describe their own goods or services. This purpose is
served until such time as the person has used his/her
surname as a trademark or service mark to an extent
sufficient to establish acquired distinctiveness.
Generally, a statement of five years’ use will be
sufficient to establish acquired distinctiveness. TMEP
§1212.05(a) (6th ed., rev. 1, 2009).
All of the evidence submitted by applicant shows that
purchasers would regard “Binion” or “Binion’s” as a
surname; it is the surname of Jack, as well as Benny,
Jack’s father, and Becky, Jack’s sister. The record is
devoid of any use of the term “Binion” or “Binion’s” as a
Ser. No. 76590702 and 76590729
28
trademark or service mark, let alone use to an extent
sufficient to show acquired distinctiveness. Simply put,
the renown of Jack Binion and the Binion family name in the
gaming industry does not establish that “Binion” is no
longer perceived as a surname by purchasers, but rather as
a service mark for services emanating from applicant.
We have considered each piece of Section 2(f) evidence
in light of the rest of the Section 2(f) evidence. We
conclude that this evidence, when considered as a whole, is
insufficient to show acquired distinctiveness of the
surnames “Binion” and “Binion’s.”
Decision: In each application, the refusal to
register under Section 2(d) on the ground of likelihood of
confusion is affirmed. And in each application, the
refusal to register under Section 2(e)(4) on the ground
that the term sought to be registered is primarily merely a
surname is affirmed, and applicant has not shown its mark
has acquired distinctiveness.