Prairie Island Indian Communityv.Treasure Island Corporation

Trademark Trial and Appeal Board

May 15, 2008

No. 91115866 (T.T.A.B. May. 15, 2008)

Oral Hearing: Mailed:
November 29, 2007 May 15, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Prairie Island Indian Community, a federally recognized
Indian Tribe
v.
Treasure Island Corporation1
_____

Opposition No. 911158662
to application Serial No. 75136734
filed on July 19, 1996

Cancellation Nos. 92028171 and 92028379
_____

Eric O. Haugen of Haugen Law Firm, PLLP for Prairie Island
Indian Community.

1 We note that in filings subsequent to the briefing of these
consolidated cases, applicant/respondent (defendant) is referred
to as Mirage Resorts, Incorporated and the law firm is listed as
Greenberg Traurig. Inasmuch as no assignments or change of
attorney have been filed, we have retained the names of the
defendant and its attorneys that continue to be of record in the
files for these proceedings.

2 The above-noted proceedings are the remaining active cases of
19 consolidated cases. Judgment on the claim of priority and
likelihood of confusion under Section 2(d) of the Trademark Act
has been entered against defendant in five cancellation
proceedings (92028127, 92028174, 92028314, 92028319 and 92028325)
in view of defendant’s failure to maintain the subject
registrations. One opposition and ten cancellation proceedings
(91157981, 92028133, 92028126, 92028130, 92028145, 92028155,
92028199, 92028248, 92028280, 92028294, and 92028342) were
dismissed without prejudice by stipulation in view of defendant’s
voluntary surrender and abandonment of the registrations and
application that were the subjects of those proceedings.
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
2

Mark G. Tratos and Robert Ryan Morishita of Quirk & Tratos
for Treasure Island Corporation.
______

Before Rogers, Kuhlke and Mermelstein, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Defendant, Treasure Island Corporation, seeks
registration of the mark shown below for services identified
in the application as “hotel and resort services” in
International Class 42.3

In addition to the drawing which includes the words TREASURE
ISLAND as part of the mark, the application includes the
following description of the mark:
The mark is three dimensional, and consists of a
pirate ship moored in the water just off a

3 Serial No. 75136734, filed on July 19, 1996, alleging November
23, 1993 as its date of first use and first use in commerce under
Section 1(a) of the Trademark Act, 15 U.S.C. §1051(a).

Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
3
Caribbean pirate village, and a gangway or bridge
going over the water, leading into a building in
the village, constituting the entrance to a hotel.

In addition, defendant owned Registration No. 2040770,
issued on February 25, 1997, for the mark shown below for
“casino services; entertainment, namely, production of live
stage shows, lounge performances, theatrical performances,
and stunt shows” in International Class 41. This
registration was cancelled on December 1, 2007, for failure
to file an affidavit of continuing use and a renewal under
Trademark Act Sections 8 and 9, 15 U.S.C. §§ 1058 and 1059.

Defendant also owned Registration No. 2040756, issued
on February 25, 1997, for the mark shown below for “men’s
and ladies’ clothing, namely, shirts, jackets, hats, caps,
suspenders, sweaters, jogging suits, shorts, pants, skirts,
swimwear, ties; aerobic wear, namely, leggings, body suits,
T-shirts, sweatshirts; ladies’ evening wear, namely,
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
4
sequined blouses, sequined sweaters, sequined dresses,
sequined jackets, vests, and evening pants; children’s
apparel, namely, shirts, shorts, pants, and swimwear.” This
registration was also cancelled on December 1, 2007 for
failure to file an affidavit of continuing use and a renewal
under Trademark Act Sections 8 and 9.

The cancellations under Sections 8 and 9 occurred
subsequent to the briefing and oral hearing for these
proceedings. Inasmuch as these proceedings are ready for
decision we will rule on the merits with regard to the marks
in the cancelled registrations, rather than issuing a show
cause order under Trademark Rule 2.134(b). However,
defendant will not benefit from the Section 7(b)
presumptions for these marks and, therefore, must prove
priority through evidence of use of these specific marks.
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
5
CLAIMS AND DEFENSES
In the opposition and cancellations, plaintiff, Prairie
Island Indian Community, alleges that prior to defendant’s
use or filing dates of the above-noted application and
registrations, plaintiff adopted and continuously used the
mark TREASURE ISLAND for hotel, casino and gaming services,
and clothing, including, caps, t-shirts, sweats and polo
shirts. Plaintiff further alleges that defendant’s above-
noted marks so resemble plaintiff’s previously used marks as
to be likely to cause confusion, or to cause mistake, or to
deceive within the meaning of Section 2(d) of the Lanham
Act, 15 U.S.C. §1052(d). In its answers defendant denied
the salient allegations and asserted the affirmative
defenses of acquiescence, laches and estoppel.
THE RECORD
By operation of Trademark Rule 2.122, the record
includes the pleadings and the files of the subject
application and registrations. In addition, the parties
have submitted trial testimony with related exhibits taken
by each party of the following witnesses: (1) Cindy Lee
Maxwell Flemke, Administration Manager for Treasure Island
Resort & Casino (Red Wing, Minnesota) and (2) Delores Marie
Knapp, Hotel Manager for Treasure Island Resort & Casino
(Red Wing, Minnesota), taken by plaintiff; and (3) Thomas O.
Mikulich, president and COO of Treasure Island Hotel and
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
6
Casino (Las Vegas, Nevada), (4) John Schadler, a partner in
Schadler Kramer Group Advertising, (5) Andrew Scott Pascal,
an employee of Wynn Resorts, (6) Ronald Gerald Valentine,
former general manager of Treasure Island Casino (Red Wing,
Minnesota), and (7) Mark William Russell, vice president and
general counsel of Treasure Island Corporation (Las Vegas,
Nevada), taken by defendant.
In addition, the parties submitted various materials
under notices of reliance.4
Defendant has maintained several objections to
testimony and exhibits on various bases. We have considered
these objections and have accorded only appropriate weight
and probative value to the evidence in view of those
objections. Specific evidence and objections are addressed
below where necessary.
RES JUDICATA
As a preliminary matter, plaintiff asserts that it is
entitled to judgment under the doctrine of res judicata in
view of the judgments entered in the many related
cancellation and opposition proceedings. Plaintiff argues
that because these decisions “established [the] existence of
(a) a likelihood of confusion as between Defendant’s

4 We note the email communications plaintiff submitted under a
notice of reliance were struck from the record by Board order
dated November 30, 2005, and we have not considered this evidence
in reaching our decision.

Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
7
TREASURE ISLAND-based marks and Plaintiff’s TREASURE ISLAND
mark; and (b) a priority in Plaintiff’s favor, all in
connection with the cancelled registrations, [they]
establish those two issues in Plaintiff’s favor relevant to
several of the remaining proceedings.” Br. p. 12.
Neither claim preclusion nor issue preclusion applies
in these cases. First, several of the prior proceedings
were withdrawn without prejudice and have no preclusive
effect with regard to remaining claims.5 With regard to the
five proceedings in which judgment was entered, the
judgments were entered prior to trial and therefore the
issues were not fully litigated as required for issue
preclusion to apply. Institut National Des Appellations
d’Origine v. Brown-Forman Corp., 47 USPQ2d 1875, 1895 (TTAB
1998).
As to claim preclusion, there must be “(1) an identity
of parties or their privies, (2) a final judgment on the
merits of the prior claim, and (3) the second claim must be
based on the same transactional facts as the first and
should have been litigated in the prior case.” Sharp

5 Although equitable estoppel could apply to the marks and goods
and services involved in the dismissals in view of defendant’s
abandonment and voluntary surrender with prejudice, as discussed
above the marks in those dismissals are different from the marks
in the proceedings before us. Aromatique Inc. v. Lang, 25 USPQ2d
1359, 1361 (TTAB 1992) (applicant, by abandoning application with
prejudice in prior opposition is estopped in subsequent
opposition from attempting to register virtually identical mark
for identical goods).

Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
8
Kabushiki Kaisha v. Thinksharp, Inc., 448 F.3d 1368, 79
USPQ2d 1376, 1378 (Fed. Cir. 2006). For purposes of claim
preclusion, the marks in the current proceeding must be the
“legal equivalent” of the marks in the prior proceedings.
“There is no reason why the fact that a party’s two marks
might be confusingly similar to each other under a
likelihood of confusion analysis should be held to be a
sufficient basis for finding that the applications to
register the two marks should be deemed to be a single
‘claim,’ for claim preclusion purposes.” Institut National,
47 USPQ2d at 1895 (CANADIAN MIST AND COGNAC not legal
equivalent of MIST AND COGNAC). While the phrases TREASURE
ISLAND or TREASURE ISLAND AT THE MIRAGE are present in the
marks from the prior proceedings, the design elements in the
present marks are very different, therefore, the marks in
the current proceedings are not “legally equivalent” to
those at issue in the prior judgments.6 In view thereof,
the “transactional facts” are not sufficiently similar for
claim preclusion to apply.

6 We note in one of the dismissed cases, Cancellation No.
92028133, the mark in the subject Registration No. 2176004
appears to be the same as the mark depicted in the registration
involved in Cancellation No. 92028171 and very similar to the
mark in the registration involved in Cancellation No. 92028379.
However, the hotel, restaurant, and bar services identified in
Registration No. 2176004, are different from the goods and
services listed for the marks in Cancellation Nos. 92028171 and
92028379 and, thus, cannot be considered the same “transactional
facts.” See Litton Industries, Inc. v. Litronix, Inc., 577 F.2d
709, 198 USPQ 280 (CCPA 1978). Moreover, as discussed above, the
dismissal does not have claim preclusive effect.
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
9
Finally, we note that defendant’s current application
and cancelled registrations were pending or issued prior to
the judgments entered against defendant, and the Board
generally does not apply claim preclusion in such
circumstances. Sharp Kabushiki Kaisha, supra, 79 USPQ2d at
1379 (“Precedent and sound administrative policy support the
Board’s reasoning that a trademark owner is entitled to
choose which opposition to defend, when the proceedings are
not an attempt to evade the effect of a previous adverse
judgment on the merits.”)
In view of the above, the previous entries of judgment
against defendant with respect to its other marks cannot be
deemed to be dispositive of defendant’s rights to the marks
in the proceedings still before us. Institut National, 47
USPQ2d at 1896.
PRIORITY AND LIKELIHOOD OF CONFUSION
Priority
Priority is in issue because plaintiff does not have a
registration of record. Plaintiff has established that
since January 19, 1990 it first used and continues to use
the mark TREASURE ISLAND for casino services and
merchandising items such as t-shirts, glassware and mugs.
See, e.g., Flemke Test. pp. 17, 22, 97, 98 and exhibits.
Further, plaintiff began offering hotel services under this
mark in December, 1996. Flemke Test. p. 166.
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
10
Defendant’s testimony, evidence and argument primarily
pertain to its first use of the mark TREASURE ISLAND with a
pirate design element shown below in connection with slot
merchandising services beginning in 1988.

In addition, defendant relies on its use of the mark
TREASURE ISLAND in various stylized formats also used in
connection with slot merchandising services since at least
May, 1989. Mikulich Test. pp. 15-18 Exhs. C, D, E and F.
Defendant is attempting to tack this use onto its
current use to establish priority; however, the marks and
goods and services in issue in the three proceedings before
us are not sufficiently similar to the marks and slot
merchandising services upon which defendant is relying to
allow for tacking.
Tacking for purposes of determining priority in Board
proceedings, which concern the question of registrability,
is applied very narrowly. “A party seeking to ‘tack’ its
use of an earlier mark onto its use of a later mark for the
same goods or services may do so only if the earlier and
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
11
later marks are legal equivalents, or are indistinguishable
from one another. To meet the legal equivalents test, the
marks must create the same commercial impression, and cannot
differ materially from one another. Thus, the fact that two
marks may be confusingly similar does not necessarily mean
that they are legal equivalents.” Pro-Cuts v. Schilz-Price
Enterprises Inc., 27 USPQ2d 1224, 1227 (TTAB 1993). See
also American Paging Inc. v. American Mobilphone Inc., 13
USPQ2d 2036 (TTAB 1989), aff’d in an unpublished opinion, 17
USPQ2d 1726 (Fed. Cir. 1990) (AMERICAN MOBILEPHONE and
AMERICAN MOBILEPHONE PAGING not legal equivalents for
purposes of tacking; registrant’s mark AMERICAN MOBILEPHONE
PAGING and design confusingly similar to petitioner’s mark
AMERICAN PAGING). See also Van Dyne Crotty, Inc. v. Wear-
Guard Corp., 926 F.2d 1156, 17 USPQ2d 1866, 1868 (Fed. Cir.
1991) (CLOTHES THAT WORK not legal equivalent of CLOTHES
THAT WORK, FOR THE WORK YOU DO).
In addition, “if the tacking of the use of one mark
onto the use of a second mark – for the purposes of
obtaining or maintaining a registration – is permitted only
when the marks are ‘legal equivalents’ or
‘indistinguishable,’ the tacking of the use of a mark for
certain goods or services onto the use of the same mark for
other goods or services – for the purposes of obtaining or
maintaining a registration – should be permitted only when
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
12
the two sets of goods or services are ‘substantially
identical.’” Big Blue Products Inc. v. International
Business Machines Corp., 19 USPQ2d 1072, 1075 (TTAB 1991).7
As can be seen from a comparison of the marks displayed
herein, the marks in the application and registrations are
substantially different from the mark depicted above with
the pirate and the bird. Even considering defendant’s use
of just the stylized wording TREASURE ISLAND, the design
elements in the subject application and registrations
differentiate the marks from this earlier use. We note that
defendant acknowledges the narrowness of what constitutes
legally equivalent marks for purposes of tacking, in its
discussion regarding the issue of claim preclusion, and
concludes, at least as to the marks in the cancelled
registrations and abandoned application, that they are not
legal equivalents of the remaining marks in issue. See Br.
pp. 41 -43 (“While some [of] the marks at issue could be

7 We further note the dicta in that case stating that “even if
IBM ultimately is unable to present facts that would permit the
tacking of the two uses that would in turn permit IBM to register
BIG BLUE for typewriter ribbons, IBM may nevertheless well be
able to establish pre-1984 trade name rights in BIG BLUE or pre-
1984 trademark rights in BIG BLUE for other office products based
upon public or trade usage that would in turn enable IBM to
prevent registration of BIG BLUE by opposer.” Id. at 1075. In
the related footnote the Board stated: “While the doctrine of
‘natural expansion of business’ can be considered in determining
whether a senior user can prevent registration of the same or
similar mark to a junior user for related goods, the doctrine
does not represent the test to be applied when the senior user
himself seeks to register a mark for certain goods by relying on
his earlier use of the same mark for ‘related’ (but not
‘substantially identical’) goods.” Id. n. 4.
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
13
seen as confusingly similar to the previously cancelled
registrations for infringement purposes, none of them are
legal equivalents for tacking or res judicata purposes.”).
Moreover, the prior goods or services, depending on the
interpretation, are not sufficiently related to the hotel
and resort services in application Serial No. 75136734, the
casino and entertainment services recited in Reg. No.
2040770, or the clothing identified in Reg. No. 2040756.8
Slot merchandising is described by defendant in the
following testimony:
But what slot merchandising means is the marketing
or sale or use of the product. I guess in the
traditional sense, the way you market a car or
market a shirt, if you’re marketing, you’re trying
to sell that to the public. But, in fact, you
don’t sell the slot machine. You sell time on the
slot machine or the entertainment value of playing
the slot machine. The slot machine is physically
present in your casino. And then it’s played in
those days by the insertion of coin. Its
technology has taken us to a much different level
now. But back then it was just the insertion of a
coin and it was a wagering game, a gambling game
that you would insert money into the machine and
there would be either a positive or negative
outcome for the customer. And the reverse would
be the case for the company. And so the slot
merchandising, I think, as I’ve testified in other
contexts, was to use a name to market and attract
customers to use or play or wager at that
particular slot machine. And that’s what we
intended to do through marketing, through
advertising, through brand recognition, through
slot tournaments that might be limited to only use
the proprietary slots as opposed to all the slots
on the floor. It effectively is marketing to sell

8 As noted above, these registrations have been cancelled and
defendant has not presented evidence of use of these specific
marks.
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
14
product. And the product that we are selling is
the entertainment value or service value of
somebody wagering on those particular slot
machines.

Russell Test. pp. 86-87.

In addition, defendant provided testimony that slot
marketing is “promoting the casino, the slot machine
component of the casino. It’s basically the promotion of
slots as an entertainment offering.” Schadler Test. p. 7.
As described by defendant “[b]y May 15, 1989, two areas or
‘banks’ of TREASURE ISLAND games, e.g. both slot and video
poker machines were in place at various locations within the
Golden Nugget and signs identifying the brand were placed
above each bank of games.” Br. p. 8.
Defendant argues that its predecessor in interest (the
Golden Nugget) “was the first Las Vegas casino to provide
gaming services to its patrons by developing its own line of
proprietarily branded games played on slot and video gaming
machines [in order to] allow customers to play games of
chance on machines that they enjoy [and] to develop customer
loyalty to the games that were available in only this
casino.” Br. p. 18. Finally, in order to “promote greater
casino play, the Golden Nugget held Treasure Island
tournaments in which patrons played only the Treasure Island
games.” Id. Further, “[t]he hotel promoted and advertised
the Treasure Island tournaments by direct mailings to
customers across the country, advertised the games in
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
15
newspapers and promoted the games on billboards. The Golden
Nugget also displayed exterior signage on the hotel/casino
promoting the Treasure Island games.” Br. p. 18 citing
Pascal Test. pp 4-5, 9-10, 14-15; Mikulich Test. pp. 36-37,
39-40, 43, 66-68, 70-71. Finally, defendant argues that
“[b]y making the TREASURE ISLAND brand of games available
for play, both in tournament and regular play, the Golden
Nugget provided ‘casino services’ to its patrons under the
TREASURE ISLAND mark.... Treasure Island’s rights for
casino services flow from providing games under the mark,
TREASURE ISLAND, for play by the public.” Br. p. 19.
Although, the goods, slot machines, may be found in
casinos and hotels, and the services, slot entertainment,
may be offered in casinos and hotels, such machines and
entertainment services are not “substantially identical” to
casino or hotel services in order to allow for tacking in
the context of an inter partes proceeding before the Board.
Moreover, even if slot merchandising services could be
considered a subset of or encompassed by casino services, as
noted above, the marks are not “legal equivalents,” and
therefore tacking would still be inappropriate.
With regard to defendant’s use on various souvenir
items beginning in 1989, although such use included the
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
16
phrase TREASURE ISLAND, it did not include the marks shown
in the subject application or registrations.9
The dates of first use of concern in this proceeding
are for the marks in the application and registrations.
Inasmuch as there is no evidence or testimony regarding
dates of actual use for these specific marks we apply the
filing date, July 19, 1996, for the application as the
earliest date upon which defendant may rely for purposes of
priority in the opposition proceeding.10 With regard to the
marks in the registrations, in view of their cancellation,
and the lack of evidence of use, no use has been established
for these exact marks on those goods and services.11
Therefore, plaintiff’s first use in connection with
casino services and on t-shirts in January 1990 is earlier

9 With regard to the third-party registrations, containing a
variety of goods and services under a single mark, referenced in
defendant’s brief but not entered into evidence, the Board may
not take judicial notice of registrations. We hasten to add that
consideration of these registrations would not change our
determination, in view of, at a minimum, the lack of legal
equivalency of the marks.

10 To the extent the record supports first use of this mark as of
the opening of defendant’s hotel in 1993, that date is still
subsequent to plaintiff’s 1990 date of first use. Mikulich Dep.
at p. 64. We also note that to the extent the articles from
various magazines and newspapers describing defendant’s plans to
open a casino, beginning in October 1991 and the national
commercials airing sometime between 1991 and 1993 constitute
sufficient promotional use to establish October 1991 as the date
of first use in connection with establishing priority, this date
is also later than plaintiff’s first use date and the testimony
again is not directed to the exact marks in issue.

11 We note that the dates of first use alleged in the
registrations were October 27, 1993 and July 21, 1993, both
subsequent to plaintiff’s established date of first use.
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
17
than defendant’s first use of the mark TREASURE ISLAND in
connection with casino and hotel services.
In view of the foregoing, plaintiff has established
priority.
Likelihood of Confusion
Having determined that plaintiff has priority as to
defendant’s specific marks subject to these proceedings, we
now consider likelihood of confusion. Our likelihood of
confusion determination under Section 2(d) 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 and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
See also, In re Majestic Distilling Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Two key
considerations are the similarities between the marks and
the similarities between the goods. See Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24
(CCPA 1976).
We turn first to a consideration of the marks. In
comparing the TREASURE ISLAND and TREASURE ISLAND and design
marks, we must determine whether they are sufficiently
similar that there is a likelihood of confusion as to source
and, in making the comparison, we must consider the
recollection of the average purchaser, who normally retains
a general, rather than specific, impression of trademarks.
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
18
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975). In making our determination, we compare the marks in
their entireties in terms of appearance, sound, connotation
and commercial impression.
We first note that in combined word and design marks,
the word portion frequently dominates inasmuch as it is the
words by which consumers will call for the goods and
services. In re Appetito Provisions Co., Inc., 3 USPQ2d
1553 (TTAB 1987). Moreover, 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 a consideration of the marks in
their entireties. In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). Although defendant’s
marks all include prominent designs, and, in the case of the
mark in the opposition proceeding, such mark includes the
trade dress of the hotel, in each mark we find that the
words TREASURE ISLAND are the dominant element.
With regard to the mark in Reg. No. 2040756, defendant,
citing Four Seasons Hotels, Ltd. v. Koury Corp., 21 USPQ2d
1847, 1852 (EDNC 1991), argues that it includes the phrase
“AT THE MIRAGE” and no confusion is likely inasmuch as
“[u]se of a strong, well-known mark as part of a composite
name reduces the likelihood that the remainder of the
composite name will create a commercial impression distinct
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
19
from that mark.” Defendant further contends that “[t]he
Mirage name and marks were deemed to be famous by the United
States District Court in Mirage Resorts, Inc. v. Stripe, 152
F. Supp.2d 1208 (D. Nev. 2000).” Br. p. 32. However, we do
not find this to be persuasive. In general the addition of
a house mark, even if well known, will not avoid a finding
of likelihood of confusion and may even serve to aggravate
the likelihood of confusion. In re Christian Dior, S.A.,
225 USPQ 533, 535 (TTAB 1985) (addition of house mark DIOR
to applicant’s LE CACHET DE DIOR for shirts does not obviate
confusion with CACHET for dresses and toiletries).
We find the difference in appearance based on the
design elements and the addition of the phrase “AT THE
MIRAGE” is not sufficient to outweigh the similarity
engendered by the identity of the common literal portions,
TREASURE ISLAND. We also find the overall commercial
impression of the marks to be similar in view of the
dominance of the words TREASURE ISLAND in defendant’s marks.
Moreover, the marks share the same connotation as to the
ordinary meaning of the words TREASURE ISLAND.
In view of the above, we find the marks to be similar
when compared in their entireties in terms of appearance,
sound, connotation and commercial impression, and the factor
of the similarity of the marks thus weighs in favor of a
likelihood of confusion. See RE/MAX of America, Inc. v.
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
20
Realty Mart, Inc., 207 USPQ 960, 964 (TTAB 1980) (similarity
in sound sufficient for likely confusion).
Turning next to the goods and services, we find that
defendant’s hotel services, casino services, and various
clothing items are related to plaintiff’s casino services
and t-shirts such that when used in connection with similar
marks they would be likely to cause confusion. The parties’
casino services are identical. Similarly, defendant’s t-
shirts listed in Reg. No. 2040756 are identical to
plaintiff’s t-shirts and related to several other of the
clothing items (e.g., sweatshirts, shorts and shirts). With
regard to defendant’s hotel services, plaintiff argues that
casino and hotel services compliment each other in that
“casinos, traditionally, have offered lodging services for
its patrons.” Br. p. 25. Indeed, the record shows that
both parties in these proceedings offer casino and hotel
services under the same mark. In addition to the TREASURE
ISLAND hotel and casino, defendant’s related companies also
offer hotel and casino services under the same mark. See,
e.g., Russell Test. p. 43 (Bellagio, The Mirage and Golden
Nugget Laughlin). Finally, while defendant argues that it
was the first to use TREASURE ISLAND for hotel services, it
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
21
does not dispute the relatedness of hotel and casino
services.12
Thus this factor favors a finding of likelihood of
confusion.
With regard to the channels of trade and class of
customers, the record shows that the parties market their
respective casino and hotel services and related
merchandising items to at least an overlapping consumer
base. Although plaintiff concentrates its marketing
regionally, defendant’s national marketing includes
plaintiff’s region. These factors also weigh in favor of a
likelihood of confusion.
Plaintiff testified to several instances of actual
confusion occurring at various times after plaintiff opened
its hotel in 1996. Plaintiff submitted evidence of actual
confusion in the form of front desk and call tracking
summaries under the testimony of Delores Knapp, the hotel
manager of Treasure Island in Red Wing, Minnesota.
Defendant asserted objections to this testimony and related
exhibits as lacking foundation and constituting hearsay. In
her managerial capacity, Ms. Knapp instructed front desk and
reservations personnel, and telephone operators to record

12 Although we do not find plaintiff’s offering of “lodging
services” to be hotel services, the fact that defendant was the
first to offer hotel services does not overcome plaintiff’s
priority obtained through its use with casino services.

Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
22
instances of misdirected reservations and phone calls where
a guest had either made a reservation for the Las Vegas
hotel thinking it was the Red Wing hotel or thinking that a
particular event was happening at the Red Wing hotel when it
was happening at the Las Vegas hotel. See generally Knapp
Test. Ms. Knapp was in charge of these records and her
testimony regarding them does not lack foundation. However,
to the extent the recorded instances were not heard by Ms.
Knapp, the information in the documents constitutes hearsay.
See Versa Products Co., Inc. v. Bifold Co. (Manufacturing)
Ltd., 50 F.3d 189, 33 USPQ2d 1801, 1818 (3d Cir. 1995)
(excluding testimony of a witness who was told about alleged
statements of confusion, where no testimony was taken of the
employees who received the calls and inquiries); Source
Services Corp. v. Source Telecomputing Corp., 635 F. Supp.
600, 230 USPQ 290, 297 (N.D. Ill. 1986) (While evidence from
employees who received phone calls from members of the
public was allowed, unsworn reports prepared by employees
and forwarded to plaintiff’s president, who testified,
deemed hearsay and not allowed under the business records
exception of Fed. R. Evid. 803(6)). See also Blansett
Pharmacal Co. v. Carmirick Laboratories Inc., 25 USPQ2d
1473, 1476 (TTAB 1992) (statements attributed to others are
hearsay and entitled to no probative value); and Corporate
Fitness Programs Inc. v. Weider Health and Fitness Inc., 2
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
23
USPQ2d 1682, 1690-91 (TTAB 1987) (testimony of others is of
little probative value in the absence of testimony from the
persons allegedly confused as to whether they were confused
and, if so, what caused their confusion). In view thereof,
this evidence is entitled to little probative weight.13
In addition, defendant argues that the number of
instances are de minimis. “Importantly, the alleged
evidence only occurs after 1997, even though Treasure Island
opened in Las Vegas in 1993. Treasure Island has more than
a million (1,000,000) room nights each year and more than
two million guests per year. In that context, 260
misdirected calls over several years to Prairie Island is an
extraordinarily small percentage. Placing this percentage
against the background of opportunity for consumers to be
confused into calling the ‘wrong TI,’ shows that little or
no weight should be given to Prairie Island’s confusion
evidence, as it is de minimus.” Br. p. 31. We agree that
the number of instances is not overwhelming, however, they
are not so insubstantial as to be de minimis.
Although we have given little weight to the evidence of
alleged actual confusion, we nevertheless believe that

13 With regard to defendant’s argument that any instances of
actual confusion were brought on by plaintiff not identifying
itself by its location in Minnesota, plaintiff has established
rights in the mark TREASURE ISLAND without any other identifying
matter, and plaintiff was under no obligation to identify itself
by its location.

Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
24
confusion is likely. The test is not whether these marks
can be distinguished when compared in a side-by-side
analysis. The test is whether there is likely to be
confusion in the marketplace where the respective goods
and/or services bearing the marks are presumed to appear.
Having considered the most relevant du Pont factors in
these cases, we conclude that the record supports a finding
of a likelihood of confusion as between defendant’s TREASURE
ISLAND and design marks and plaintiff’s TREASURE ISLAND
mark, such that registration of defendant’s marks is barred
under Trademark Act Section 2(d).
AFFIRMATIVE DEFENSE OF ESTOPPEL BY ACQUIESCENCE
We now consider defendant’s affirmative defense of
acquiescence.14 “Acquiescence is a type of estoppel that is
based upon the plaintiff’s conduct that expressly or by
clear implication consents to, encourages, or furthers the
activities of the defendant, that is not objected to.” The
Christian Broadcasting Network, Inc. v. ABS-CBN
International, 84 USPQ2d 1560 (TTAB 2007). To establish the
defense of acquiescence defendant must prove that
plaintiff’s conduct amounted to “an assurance by the
plaintiff to the defendant, either express or implied that

14 Defendant did not present evidence or argument as to laches or
estoppel and therefore we consider these defenses waived. We
further note that the deficiencies present in the assertion of
acquiescence discussed above would similarly undermine these
defenses.
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
25
plaintiff will not assert his trademark rights against the
defendant.” CBS, Inc. v. Man’s Day Publishing Company,
Inc., 205 USPQ 470 (TTAB 1980). Acquiescence, then,
requires proof of three elements: (1) that plaintiff
actively represented that it would not assert a right or a
claim; (2) that the delay between the active representation
and assertion of the right or claim was not excusable; and
(3) that the delay caused defendant undue prejudice. Coach
House Restaurant Inc. v. Coach and Six Restaurants, Inc.,
934 F.2d 1551, 19 USPQ2d 1401, 1409 (11th Cir. 1991)
(acquiescence requires active consent). See also Hitachi
Metals International, Ltd. v. Yamakyu Chain Kabushiki
Kaisha, 209 USPQ 1057 (TTAB 1981).
In an opposition or cancellation proceeding, the
earliest date the equitable defense of acquiescence may
begin to run is the date the mark is published for
opposition, if plaintiff had actual knowledge of defendant’s
use. See Krause v. Krause Publications Inc., 76 USPQ2d 1904
(TTAB 2005). Cf. Teledyne Technologies, Inc. v. Western
Skyways, Inc., 78 USPQ2d 1203, 1210, n. 10 (TTAB 2006)
(“[I]n the absence of actual knowledge prior to the close of
the opposition period, the date of registration is the
operative date for calculating laches.”) Thus, there was no
delay with regard to the opposition.
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
26
With regard to the cancelled registrations, although
the record shows that plaintiff had actual knowledge of
defendant’s use of the TREASURE ISLAND word portion of the
marks, it is not clear from the record if plaintiff had
actual knowledge of the specific marks depicted in the
registrations. As noted above, defendant has not shown its
use of these specific marks. Thus, we calculate the delay
from the date of registration in these cases. The
registration in Cancellation No. 92028171 issued on February
25, 1997 and the cancellation petition was filed on October
23, 1998. The registration in Cancellation No. 92028379
issued on February 25, 1997 and the petition was filed on
November 16, 1998. The petitions were filed approximately
one-and-a-half years after the respective registrations
issued. We do not find this to be an inordinate delay.
More importantly, as discussed below, the other two elements
necessary to establish acquiescence have not been satisfied.
Defendant argues that plaintiff “acquiesced to
[defendant’s] use of TREASURE ISLAND marks by knowingly
availing itself of the hotel and casino services offered
under those marks. [Plaintiff’s] representatives traveled
to Las Vegas on multiple occasions in relation to gaming
conventions and trade shows and stayed at the Treasure
Island Resort Hotel. Flemke Tr. Pp. 205-217 and ex. E.
Prairie Island cannot later be heard to complain of Treasure
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
27
Island’s registrations of the TREASURE ISLAND marks when its
own representatives voluntarily chose to acknowledge the use
by staying and enjoying the services and amenities of
Treasure Island at the Mirage without objection.” Br. p.
34. In addition, defendant argues that plaintiff “further
acquiesced to [defendant’s] interest in the marks by
actively awarding trips to Treasure Island in Las Vegas as a
prize for a contest in Minnesota in 1995. In fact, the
January/February 1995 newsletter that advertised the contest
read: ‘To thank you for visiting Treasure Island in
Minnesota, we’d like to treat you to Treasure Island in Las
Vegas.’ The manner in which the contest was promoted, in
particular using the identical print size and font for the
Minnesota TREASURE ISLAND and the Las Vegas TREASURE ISLAND
in promotional materials, suggests that [plaintiff] intended
to infer an affiliation between its Minnesota property and
Treasure Island’s Las Vegas Treasure Island property. At
the very least, [defendant] would have fairly seen
[plaintiff’s] conduct as an overt expression of
acquiescence. In such an instance, [plaintiff] should be
estopped from later changing positions and challenging the
registrations.” Br. p. 35.
We do not find these actions by plaintiff’s employees
sufficient to support a finding that plaintiff “actively
represented” that it acquiesced to defendant’s registration
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
28
of the marks. The fact that plaintiff’s employees may have
stayed at defendant’s hotel is not representing that
plaintiff does not object to defendant’s registration of the
mark.
Even if we construed plaintiff’s actions as actively
representing that defendant could use the TREASURE ISLAND
marks, these actions cannot be viewed as actively
representing that plaintiff did not object to defendant’s
registration of these marks. See Coach House, supra, 19
USPQ2d at 1404 (“We conclude that the TTAB abused its
discretion by failing to observe the distinction in this
case between acquiescence as to use and acquiescence as to
registration. Although petitioner actively represented that
the registrant could use its logo, petitioner did not
represent or imply that it would allow registrant to
register the petitioner’s servicemark on the federal
Principal Register. Therefore, no period of delay could
have begun running as to registration, until petitioner had
notice that registrant was doing something that would
generate a claim or right of petitioner.”)
Finally, defendant argues that it has “invested tens of
millions of dollars to advertise and promote its registered
marks and the use of those marks at its resort” and “would
lose the benefit of the monies invested in the registration
and prosecution of its marks should they be cancelled and
Opposition No. 91115866; Cancellation Nos. 92028171 and 92028379
29
would further lose the ability to stop third parties’ use of
the marks.” Br. p. 35.
Even assuming there was active representation and
inexcusable delay, it is unclear how “undue prejudice” or
“economic prejudice” would be shown in view of the fact that
the rights here are to maintain registrations which
defendant has allowed to lapse. As stated by plaintiff, “In
this section of its Brief, as throughout its entire Brief,
Defendant speaks only of the ‘TREASURE ISLAND’ marks.
Plaintiff and the Board are left to wonder how much economic
prejudice would befall Defendant if the specific marks at
issue in these proceedings were cancelled and successfully
opposed.” Reply Br. p. 20.
In view of the foregoing, defendant’s assertion of this
equitable defense fails.
Decision: The opposition is sustained and the
petitions are granted as to plaintiff’s claims of priority
and likelihood of confusion under Section 2(d) of the
Trademark Act.