Midwest Gaming & Entertainment LLC

Trademark Trial and Appeal Board

Jan 28, 2013

No. 85111552 (T.T.A.B. Jan. 28, 2013)

Mailed:
Jan. 28, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Midwest Gaming & Entertainment LLC
________

Serial No. 85111552
_______

W. Dennis Drehkoff of Kelly & Krause, L.P. for Midwest
Gaming & Entertainment LLC.

Jeffery C. Coward, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Grendel and Gorowitz, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:
Midwest Gaming & Entertainment LLC (applicant) seeks
registration on the Principal Register of the mark LOTUS
(in standard character form) for services identified in the
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser. No. 85111552
2
application, as amended, as “bar services located in a
casino,” in Class 43.1
The Trademark Examining Attorney has issued a final
refusal to register applicant’s mark under Trademark Act
Section 2(d), 15 U.S.C. Section 1052(d). Specifically,
registration has been refused on the ground that
applicant’s mark, as applied to the services identified in
the application, so resembles the mark LOTUS, previously-
registered (in standard character form) on the Principal
Register for, inter alia, Class 43 services identified in
the registration as “providing banquet and social function
facilities for special occasions; restaurant and bar
services,”2 as to be likely to cause confusion, to cause
mistake, or to deceive.
Applicant has appealed the final refusal. After
careful consideration of the evidence of record and the
arguments of counsel, we affirm the refusal to register.
Our likelihood of confusion determination under
Section 2(d) is a legal conclusion, based on an analysis of
all of the facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue (the

1 Serial No. 85111552, filed on August 19, 2010, based on
applicant’s asserted bona fide intent to use the mark in
commerce. Trademark Act Section 1(b), 15 U.S.C. Section 1051(b).

2 Reg. No. 3398472, issued on March 18, 2008.
Ser. No. 85111552
3
du Pont factors). See In re E. I. du Pont de Nemours &
Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973); In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533
(Fed. Cir. 1997). “In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services.” In re Max Capital Group Ltd., 93 USPQ2d
1243, 1244 (TTAB 2010); see In re Chatham Int’l Inc., 380
F.3d 1340, 71 USPQ2d 1944, 1945 (Fed. Cir. 2004) (referring
to these as “two key considerations”). See also Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1357, 192
USPQ 24 (CCPA 1976).
Under the first du Pont factor, we determine the
similarity or dissimilarity of applicant’s mark and the
cited registered mark when they are viewed in their
entireties in terms of appearance, sound, connotation and
commercial impression. In this case, we find that
applicant’s mark, LOTUS, and the cited registered mark,
LOTUS, are identical in terms of appearance and sound.
Likewise, the designation LOTUS is arbitrary as applied to
restaurant and bar services, and it has the same
connotation and creates the same commercial impression in
both marks. In short, we find that the marks are
identical. This finding under the first du Pont factor
Ser. No. 85111552
4
strongly supports a conclusion that a likelihood of
confusion exists.
Under the second du Pont factor, we determine the
similarity or dissimilarity of the services as they are
identified in applicant’s application and in the cited
registration, respectively. Applicant’s services are
identified in the application as “bar services located in a
casino.” The services identified in the cited registration
include, in pertinent part, “restaurant and bar services.”
Applicant has specifically limited its “bar services”
to those “located in a casino.” However, the “restaurant
and bar services” identified in the cited registration are
not limited in any way. We therefore must presume that
they encompass all services of the nature and type
identified, including “bar services located in a casino.”
See Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987).
It is settled that “...it is the identification of
[services] that controls, not what extrinsic evidence may
show about the specific nature of the [services]. ... An
applicant may not restrict the scope of the [services]
covered in the cited registration by argument or extrinsic
evidence.” In re La Peregrina Ltd., 86 USPQ2d 1645 at 1647
Ser. No. 85111552
5
(TTAB 2008); see also In re Fisher Scientific Co., 440
Fed.2d 434, 169 USPQ 436, 437 (CCPA 1971).
For these reasons, we find, for purposes of
determining the registrability of applicant’s mark, that
applicant’s “bar services located in a casino” are similar
to, and indeed encompassed by and thus legally identical
to, the “restaurant and bar services” identified in the
cited registration. This finding under the second du Pont
factor supports a conclusion that a likelihood of confusion
exists.3

3 For the first time with its Reply Brief, applicant submitted
new evidence consisting of copies of two sets of third-party
registrations which purportedly show that in two instances the
Office has issued a registration of a mark for casino-based
restaurant and bar services despite an earlier registration of
the same or a similar mark for non-casino-based restaurant and
bar services. Applicant argues that this evidence suggests that
the Office deems restaurant and bar services located in a casino
to be dissimilar from restaurant and bar services which are not
located in a casino. This evidence is untimely and therefore not
part of the record for this case. See Trademark Rule 2.142(d),
37 C.F.R. Section 2.142(d). However, even if this evidence were
properly of record, it would be of no probative value. In
neither of the two situations involving the apparently
overlapping registrations did the previous registration cover
“restaurant and bar services” per se, like the cited registration
in this case. Instead, each prior registration identified a
specific type of restaurant which apparently was deemed to be
sufficiently dissimilar to casino-based restaurant and bar
services that the overlapping registrations could be issued. In
any event, we are not bound by the apparent findings or decisions
made by Trademark Examining Attorneys in examining these other
applications. In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d
1564, 1566 (Fed. Cir. 2001)(the Board must assess each
application on the record of public perception in that
application and there is little persuasive value in other
registrations).

Ser. No. 85111552
6
Under the third du Pont factor, we determine the
similarity or dissimilarity of the trade channels in which,
and the classes of purchasers to whom, the respective
services are or would be marketed. Because there are no
limitations or restrictions as to trade channels or classes
of purchasers in the registrant’s pertinent identification
of services, i.e., “restaurant and bar services,” we
presume that those services are or would be marketed in all
normal trade channels for such services and to all normal
classes of purchasers of such services. See, e.g., Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1722 (Fed. Cir. 2012); In re Elbaum, 211 USPQ
639 (TTAB 1981).
Moreover, although applicant has limited its trade
channels to casinos and its purchasers presumably to casino
patrons, registrant’s unrestricted registration encompasses
bar services rendered in a casino setting to casino
patrons. Cf. In re Hartz Hotel Services Inc., 102 USPQ2d
1150, 1152 (TTAB 2012)(where services in the application
are legally identical to the services in the cited
registration, there is a presumption that the trade
channels and classes of purchasers likewise are legally
identical); In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
1994)(same).
Ser. No. 85111552
7
We acknowledge that if, as we must presume, the
registrant were to render its restaurant and bar services
in a casino to casino patrons, it is unlikely that it would
be rendering such services in the same casino(s) in which
applicant is rendering its bar services. However, the
relevant class of purchasers, i.e., casino patrons, would
be the same in both cases, and we must assume that they
could encounter applicant’s and the registrant’s services
in the different casinos. We find that they would be
likely to be confused if they were to encounter “bar
services” and “restaurant and bar services,” respectively,
both offered under the mark LOTUS, in those different
casinos.
In short, we find that the trade channels and classes
of purchasers for applicant’s services and the services in
the cited registration are similar and indeed legally
identical. This finding under the third du Pont factor
supports a conclusion that confusion is likely.
Further with respect to the second and third du Pont
factors, we note that the registrant’s Class 43 services as
identified in the cited registration are “providing banquet
and social function facilities for special occasions;
restaurant and bar services.” Applicant argues that our
likelihood of confusion determination should not be based
Ser. No. 85111552
8
solely on the services identified as “restaurant and bar
services,” but that we instead must consider the
registrant’s services in the context of the Class 43
identification of services in its entirety.
In this regard, applicant argues that the registrant’s
“restaurant and bar services,” when read in the context of
the entire Class 43 identification of services, must be
limited to a specific type of such services and to a
specific trade channel and class of purchasers, i.e., to
restaurant and bar services provided in connection with
“providing banquet and social function facilities for
special occasions.” Applicant argues that this restriction
to the registrant’s services, trade channels and
purchasers, when combined with applicant’s restriction of
its own trade channels and purchasers to casinos and casino
patrons, distinguishes applicant’s and registrant’s
services, trade channels and purchasers, and suffices to
eliminate any likelihood of confusion among purchasers of
the respective services.
Applicant’s argument is unpersuasive.
In the cited registration’s identification of
services, the “providing banquet and social function
facilities for special occasions” are services separated by
a semicolon from the “restaurant and bar services.” Under
Ser. No. 85111552
9
standard examination practice, a semicolon is used to
separate distinct categories of goods or services.4 We find
that here, the semicolon separates the registrant’s
“restaurant and bar services” into a discrete category of
services which is not connected to nor dependent on the
“providing banquet and social function facilities for
special occasions” services set out on the other side of
the semicolon. We further find that the registrant’s
“restaurant and bar services,” as separately set out in the

4 See Trademark Manual of Examining Procedure (TMEP)
(October 2012) at Section 1402.01(a), “General Guidelines
for Acceptable Identifications of Goods or Services”:

Semicolons should generally be used to separate
distinct categories of goods or services within a
single class. For example, “cleaners, namely, glass
cleaners, oven cleaners, and carpet cleaners;
deodorizers for pets” is an acceptable identification
in Class 3. In this example, the word “cleaners”
names the category covering “glass cleaners, oven
cleaners, and carpet cleaners.” The semicolon prior
to “deodorizers for pets” indicates that the
deodorizers are a separate category of goods from the
cleaners.

We also note that Fowler’s Modern English Usage (rev. 3rd ed.) at
page 699 (submitted by applicant itself with its reply brief and
of which we take judicial notice) states that: “The semicolon
separates two or more clauses which are of more or less equal
importance and are linked as a pair or series…,” and that “…the
semicolon is a useful device for separating a list of items set
out in consecutive (as distinct from columnar) form…”.
(Emphasis added.) Thus, this standard usage authority further
supports the conclusion that, as the Office’s practice as set
forth in the TMEP provides, the semicolon in the cited
registration’s identification of services serves to separate
“restaurant and bar services” and “providing banquet and social
function facilities for special occasions” into two discrete
categories of services.
Ser. No. 85111552
10
identification of services by means of the semicolon, stand
alone and independently as a basis for our likelihood of
confusion findings under the second and third du Pont
factors.
Although without explicitly stating its argument in
such terms, applicant essentially appears to be arguing
that the “restaurant and bar services” identified in the
cited registration should be read in pari materia with the
“providing banquet and social function facilities for
special occasions.” This argument is unavailing. See In
re Thor Tech Inc., 90 USPQ2d 1634 (TTAB 2009).
In Thor Tech, the applicant’s goods were identified as
“recreational vehicles, namely travel trailers and fifth
wheels.” Registration was refused under Section 2(d) based
on a cited registration with goods identified as “trailers,
dump trailers, and truck bodies.” The applicant argued
that the “trailers” in the cited registration should not be
interpreted as encompassing recreational vehicle-type
trailers. Id. at 1637. Rather, the applicant argued,
“[t]he term ‘trailers’ in the cited registration should be
read in pari materia with the associated goods listed in
the registration,” i.e., “dump trailers, truck bodies,”
such that the identification of goods in the cited
registration would in effect be construed as “industrial
Ser. No. 85111552
11
and commercial trailers sold to professional purchasers,
dump trailers and truck bodies.” Id. The Board rejected
that argument, finding instead that the broadly-identified
“trailers” must be construed as encompassing recreational
vehicle-type trailers like the applicant’s, and not merely
industrial and commercial trailers.
Similarly in this case, we will not consider the
broadly-identified “restaurant and bar services” in the
cited registration in pari materia with, or to be limited
by, the other wording in the identification of services,
i.e., “providing banquet and social function facilities for
special occasions.” Indeed, the Board’s finding in Thor
Tech applies a fortiori here, where the registrant’s
broadly-identified “restaurant and bar services” are
actually separated by a semicolon from the other wording in
the identification of services, thus rendering them a
separate category of services and an independent basis for
the Section 2(d) refusal.
In short, we find that the “restaurant and bar
services” identified in the cited registration stand alone
as the basis for our analysis under the second and third du
Pont factors. As discussed above, those “restaurant and
bar services” encompass and are thus legally identical to
applicant’s “bar services located in a casino,” and the
Ser. No. 85111552
12
trade channels and purchasers for the respective services
likewise are legally identical.
Under the fourth du Pont factor, we consider the
conditions under which the services are or would be
purchased, including purchaser sophistication. We find
that the relevant purchasers of restaurant and bar
services, including bar services located in a casino, would
include ordinary consumers who would exercise only a normal
degree of care in purchasing the services. This finding
under the fourth du Pont factor supports a conclusion that
confusion is likely. At best, this factor is neutral; it
certainly does not weigh in applicant’s favor. Applicant’s
arguments to the contrary are not persuasive.
Applicant has presented evidence consisting of TESS
printouts of dozens of third-party registrations of
numerous JACK’S-formative marks, all registered for
restaurant and/or bar services. (Applicant’s January 10,
2012 Request for Reconsideration.) Examples of these marks
include CAPTAIN JACK’S, MOUNTAIN JACK’S, CALICO JACK’S,
OMAHA JACK’S and FAT JACK’S BBQ. Applicant argues that
these registrations establish that consumers are able to
distinguish the source of restaurant and/or bar services
even if sold under similar marks, and that consumers thus
will be able to distinguish applicant’s and the
Ser. No. 85111552
13
registrant’s services in our case even if sold under
identical LOTUS marks.
This argument is unpersuasive. Unlike the apparently
dozens of JACK’S-formative marks on the Register, the
registrant’s LOTUS mark is arbitrary and strong on this
record. For that reason, we find that applicant’s evidence
of numerous third-party JACK’S-formative registrations is
of little or no probative value in this case involving the
mark LOTUS for restaurant and bar services.5
In summary, we find that applicant’s mark and the
cited registered mark are identical, i.e., LOTUS. We also
find that, for purposes of determining the registrability
of applicant’s mark, applicant’s “bar services located in a
casino” are encompassed by and thus deemed to be legally
identical to the broadly-identified “restaurant and bar
services” set forth in the cited registration. We also
find that the respective trade channels and purchasers
likewise are legally identical. We find that the relevant

5 Moreover, it is settled that the mere existence of third-party
registrations is not evidence that the registered marks are
actually in use or that the public is familiar with them. See,
e.g., In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1259
(Fed. Cir. 2010). We add that even if applicant had submitted
evidence of actual use of these third-party JACK’S-formative
marks, such evidence would be entitled to little or no probative
value in this case, which involves the arbitrary and undiluted
mark LOTUS.
Ser. No. 85111552
14
purchasers include ordinary consumers who would exercise
only a normal degree of care in purchasing these services.
Based on these findings, and for all of the reasons
discussed above, we conclude that a likelihood of confusion
exists. We have considered all of applicant’s arguments to
the contrary but we are not persuaded by them.
Decision: The refusal to register is affirmed.