Progressive Games, Inc.

Trademark Trial and Appeal Board

Nov 29, 2000

No. 75359707 (T.T.A.B. Nov. 29, 2000)

Paper No. 19
CEW
11/29/00
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
___________
Trademark Trial and Appeal Board
___________
In re Progressive Games, Inc.
___________
Serial No. 75/359,707
___________
Robert E. Purcell and Kirstin L. Stoll-DeBell of Reilly &
Purcell for applicant.
Jeffery C. Coward, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
____________
Before Hanak, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Walters, Administrative Trademark Judge:
This case concerns an application on the Principal
Register for the mark shown below for “casino gaming tables
and casino card games.”1 The application includes a
disclaimer of PROGRESSIVE BLACK JACK apart from the mark as
a whole.

1 Serial No. 75/359,707, in International Class 28, filed September 19,
1997, based on use of the mark in commerce, alleging first use and
first use in commerce as of February 28, 1997. The owner of record of
this application is Progressive Games, Inc.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial No. 75/359,707
2
The Examining Attorney has issued a final refusal
under Sections 1, 2 and 45 of the Trademark Act on the
ground that the subject matter does not function as a
trademark to identify and distinguish the goods of
applicant from those of others and does not indicate the
source of such goods. Additionally, the Examining Attorney
has issued a final requirement for the submission of
substitute specimens showing trademark use of the subject
matter in connection with the goods identified in the
application.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested.
Specimens
A copy of the photograph submitted as a specimen in
this application is shown below:
Serial No. 75/359,707
3
Applicant contends that its specimens are adequate
because the photograph submitted shows a sign that is
affixed to applicant’s gaming tables and, further, that
this sign constitutes a display associated with its casino
card games. Applicant states that the specimen shows “an
electronic sign [that] is the equivalent point-of-sale
material designed to catch the attention of potential
consumers … and induce consumers to play Applicant’s casino
card games at Applicant’s casino gaming tables.” Applicant
states, further, that:
Applicant displays its casino gaming tables at
trade shows where Applicant seeks to lease its
casino gaming tables and license its casino card
games to casinos. The electric sign is designed
to catch the attention of potential casino
lessees, and induce these casinos to lease
Applicant’s casino table games and casino card
games.
Serial No. 75/359,707
4
The Examining Attorney’s argument regarding the
unacceptability of the specimens is unclear. In his brief,
the Examining Attorney argues that the specimens are
unacceptable because the specimens do not demonstrate use
of the subject matter as a trademark, i.e., the subject
matter is allegedly “buried” in other matter in the sign.
Whether or not the subject matter functions as a trademark
is addressed below. Although reference is made to the use
of the mark on the specimens in determining whether the
subject matter functions as a trademark, it is not an issue
pertaining to the acceptability of the specimens.
In his final office action, the Examining Attorney
argues that the specimens are not acceptable point-of-sale
displays because applicant is not actually selling the
listed goods. Rather, he argues, applicant appears to
offer casino services. The record contains no basis for
this conclusion. From the record, it is perfectly clear
that applicant does, in fact, offer the identified goods
for sale and that the sign displayed in the specimens does
function as a point-of-purchase display at trade shows.2

2 With regard to the identified goods, there is no evidence in the
record indicating whether the patrons of casinos would be considered
relevant purchasers of the identified goods, or whether they would be
viewing the mark in connection with possible casino gaming services.
However, it is not necessary to decide this point as applicant has
stated that the signs function as point-of-purchase displays at trade
shows.
Serial No. 75/359,707
5
Whether or not applicant may also offer services in
connection with these goods is not relevant herein.
Thus, we find the Examining Attorney’s requirement for
substitute specimens to be unwarranted.
Use as a Trademark
We turn, next, to the refusal on the ground that the
subject matter does not function as a mark to identify and
distinguish applicant’s goods from those of others and does
not indicate the source of such goods. The Examining
Attorney contends that the subject matter “is simply buried
in the middle of a design and word-filled electronic sign”
and, thus, “it is highly unlikely that consumers would
extract the particular subject matter of this application
from the rest of the sign and attribute trademark
significance to [it].”
Applicant contends that the use of the “tm” in
connection with the subject matter demonstrates applicant’s
intent that the subject matter function as a trademark; and
that there is no requirement that the subject matter be
prominently displayed on the specimen for it to function as
a mark. 3 Applicant contends, further, that:

3 Applicant argues that it has submitted similar specimens in
applications for similar marks without encountering this refusal. The
Examining Attorney objects to evidence in this regard submitted with
applicant’s supplemental brief on the ground that it is untimely. With
regard to the evidence, it is untimely and we have not considered it.
Serial No. 75/359,707
6
since there are two uses of the phrase
“progressive blackjack” appearing on the sign, it
would be silly to include two such uses of that
phrase, unless one of the uses of that phrase was
part of a separate distinctive element appearing
in the sign [and, that] persons viewing the sign
would accord a special significance to one of the
occurrences of the phrase “progressive
blackjack,” especially, where, as here, such a
phrase is intertwined in a special, separately
identifiable design element.
The term “trademark,” as defined in the relevant part
of Section 45 of the Trademark Act, means “any word, name,
symbol, or device, or any combination thereof used by a
person to identify and distinguish his or her goods,
including a unique product, from those manufactured or sold
by others and to indicate the source of the goods, even if
that source is unknown.”
A critical element in determining whether a term is a
trademark is the impression the term makes on the relevant
public. In re Volvo Cars of North America, Inc., 46 USPQ2d
1455, 1459 (TTAB 1998). In the case before us, the inquiry
is whether the design sought to be registered is likely to
be perceived as a source indicator. In this regard, we
agree with applicant. The subject matter is a design that
is distinct from the other information and design on the

However, even if it had been considered as part of the record, it would
be of little or no persuasive value as each case must be decided on its
own facts. Further, the Board will not be bound by decisions made by
Examining Attorneys.
Serial No. 75/359,707
7
sign; it is centered at the bottom of the sign; it is
accompanied by the “tm”; and it repeats the words
“Progressive Blackjack” appearing elsewhere on the sign.
These factors taken together lead us to conclude that the
subject matter is used as a trademark on the specimen of
record. The Examining Attorney’s refusal is reversed.
Decision: We reverse both the refusal under Sections
1, 2 and 45 of the Trademark Act, and the refusal based on
the Examining Attorney’s requirement for substitute
specimens.
E. W. Hanak
P. T. Hairston
C. E. Walters
Administrative Trademark Judges,
Trademark Trial and Appeal Board