United States Playing Card Companyv.Harbro, LLC

Trademark Trial and Appeal Board

Dec 14, 2006

No. 91162078 (T.T.A.B. Dec. 14, 2006)

Mailed: December 14, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

United States Playing Card Company
v.
Harbro, LLC
_____

Opposition No. 91162078
to application Serial No. 78253725
filed on May 23, 2003
_____

Lynda E. Roesch of Dinsmore & Shohl LLP for United States
Playing Card Company.

Timothy A. Flory of Van Dyke, Gardner, Linn & Burkhart, LLP
for Harbro, LLC.
______

Before Quinn, Kuhlke and Bergsman, Administrative Trademark
Judges.

Opinion by Bergsman, Administrative Trademark Judge:

United States Playing Card Company (“opposer”) filed an
opposition to the application of Harbro, LLC (“applicant”)
to register the mark VEGAS for “playing cards” in
International Class 28.1 As grounds for opposition, opposer
asserted that the mark VEGAS as applied to playing cards is
deceptive under Section 2(a) of the Lanham Act, 15 U.S.C.
§1052(a), and is primarily geographically descriptive or

1 Application Serial No. 78253725, filed on May 23, 2003,
claiming dates of first use of June 13, 2003.
THIS OPINION IS CITABLE
AS PRECEDENT OF
THE T.T.A.B.
Opposition No. 91162078
2
primarily geographically deceptively misdescriptive under
Sections 2(e)(2) and 2(e)(3) of the Lanham Act, 15
U.S.C.§1052(e)(2) and (3), respectively. In its answer,
applicant denied the salient allegations in the opposition.
For the reasons set forth below, the opposition is
dismissed.

A. The Record
1. Opposer’s Testimony and Evidence
a. Kevin Bagger Deposition
Kevin Bagger is the Director of Internet Marketing and
Research for the Las Vegas Convention and Visitor’s
Authority (“LVCVA”). The LVCVA is the official marketing
organization for Las Vegas and the surrounding communities.
Mr. Bagger oversees web-marketing efforts and is familiar
with efforts of the LVCVA to promote travel and tourism to
Las Vegas. Mr. Bagger testified that “Vegas” means “Las
Vegas, Nevada” and, accordingly, the LVCVA uses “Only Vegas”
and “Whatever happens in Vegas, stays in Vegas” as
promotions to reference Las Vegas. (Bagger Dep., p. 10,
Exhibits 27, 28). According to Mr. Bagger, Las Vegas is
considered the entertainment capital of the world and it has
become one of the best-known domestic and international
tourist destinations. (Bagger Dep., p. 7). Las Vegas
entertainment includes live shows, golf, fine dining, spas,
Opposition No. 91162078
3
and gaming. (Bagger Dep., p. 8). Gaming involves games of
chance, including slot machines, blackjack, craps, and other
games that use playing cards. (Bagger Dep., p. 9). Casino
playing cards are recycled and resold in gift shops in Las
Vegas hotels. (Bagger Dep., p. 20).2
b. Daniel Espenscheid Deposition
Daniel Espenscheid is the Casino Sales Manager for
opposer. Mr. Espenscheid is responsible for supplying
playing cards to Las Vegas casinos and managing opposer’s
Las Vegas warehouse where the playing cards are stored.
Opposer supplies playing cards to approximately 85% of the
Las Vegas casinos.

2 The author of an article in the November 28, 2000 issue of the
Kansas City Star (attached to opposer’s second notice of
reliance) explains the resale market for casino playing cards:

Casinos cannot simply throw used cards
away. State regulators typically require
permanent destruction or defacing of each
card to ensure none pops out of the sleeve
of a card cheat one day.

As a result, card recycling is a Las Vegas
cottage industry. Baranowski said
recyclers competed with one another for
boxes of used cards that have been drilled
through by casinos or have had their
corners clipped.

These entrepreneurs then hand-sort the
cards into complete decks for secondary
sales as Las Vegas souvenirs. The casino
gets a small cut or a percentage of the
sorted decks for resale in their own shops.
Opposition No. 91162078
4
Regarding the market for used casino cards, Mr.
Espenscheid testified as follows:
There is a secondary use where companies
come in, local companies come in after
the cards are used, they’re canceled,
this company will reconstitute the decks
and they’re marked as being used and
then they’re resold into retail and also
throughout the country in different
retail stores.

(Espenscheid Dep., pp. 13). Mr. Espenscheid identified
“canceled” decks of playing cards from seven (7) casinos.
Each deck had a seal with a legend to the effect that “These
cards were used in actual play in the casino.” (Espenscheid
Dep. pp. 36-40; Exhibits 20-26).
Mr. Espenscheid explained that the canceled decks of
playing cards were good souvenirs because “[t]hese were the
customized decks that were actually in play on the tables.”
(Espenscheid Dep. pp. 39-40).
Mr. Espenscheid also testified that applicant’s VEGAS
brand playing cards are printed in China on paper from
Germany while applicant itself is located in Michigan.
Q: This is number 7. Opposer’s Exhibit 7 is a
deck of cards with the seal broken. We’ve
opened these cards up just so you know. I’ll
ask you to identify Exhibit 7.

A. It is a Vegas brand playing card.

Q. Do you know who makes that?

A. Harbro Company.

Q. Can you tell us where it’s made? Does it say
anywhere on that?
Opposition No. 91162078
5

A. The cards are printed in China, they’re made
on paper from Germany and the codings
actually are from US.

Q. Where is Harbro located?

A. In Brighton, Michigan.

(Espenscheid Dep., pp. 22-23, Exhibit 7). Moreover, Mr.
Espenscheid confirmed that to his “understanding” all of the
playing cards used in Las Vegas are manufactured elsewhere.
(Espenscheid Dep. p. 45).
c. Opposer’s Notice of Reliance
Opposer filed a notice of reliance pursuant to
Trademark Rule 2.122(e) with references to over 630 articles
from printed publications, namely newspapers and magazines.
The notice of reliance included an entry from Merriam-
Webster’s Geographical Dictionary, p. 633 (3rd ed. 1997)
that explained that Las Vegas is “often shortened to Vegas.”
The definition of “Vegas” in the same dictionary referenced
“Las Vegas.” Id. at 1254. Opposer explained that the
entries are relevant to prove that “Vegas” refers to Las
Vegas, Nevada, and that there is a connection (i.e., a
goods/place association) between playing cards and Las
Vegas.

Opposition No. 91162078
6
2. Applicant’s Testimony and Evidence
a. Karl Ondersma Deposition
Karl Ondersma is an associate in the law firm
representing applicant. Referencing Espenscheid Exhibit
Nos. 10, 12, and 15 (websites advertising the sale of
canceled casino playing cards), Mr. Ondersma visited those
websites, as well as other linked sites, and determined that
the companies identified therein were not located in Las
Vegas. Also, Mr. Ondersma purchased playing cards from
Gameland Sports (identified as Espenscheid Exhibit 10)
located in Detroit, Michigan.
b. Applicant’s Notice of Reliance
Applicant filed a notice of reliance making of record
four trademark registrations for playing cards:
Mark Registration No. Status
TAHOE 1,189,273 Canceled
NEVADA 726,940 Renewed in 2002
CLUB RENO 401,715 Canceled
BROADWAY 172,312 Renewed in 2003
Opposer owns the TAHOE and BROADWAY registrations.
3. Opposer’s Rebuttal Evidence
a. Joseph Robinette Deposition
Joseph Robinette is opposer’s General Counsel. Mr.
Robinette approved an advertisement for a promotion by
Kroger Company for the World Poker Tour. The advertisement
Opposition No. 91162078
7
featured playing cards manufactured by opposer for the World
Poker Tour.
b. Kathryn Przywara Deposition
Kathryn Przywara is an attorney at the law firm
representing opposer. Ms. Przywara visited websites that
advertise and sell canceled playing cards from Las Vegas
casinos. Ms. Przywara also purchased a charm bracelet
featuring playing cards from the Las Vegas Centennial
website.
c. Opposer’s Notice of Reliance
Opposer filed a second notice of reliance with
additional newspaper and magazine articles purportedly to
show that Las Vegas is a known geographic location
associated with playing cards.
4. Applicant’s Objections To Opposer’s Evidence
With its brief, applicant filed an objection to
opposer’s rebuttal testimony on the ground that it was
improper rebuttal. Applicant also lodged objections to
internet printouts and documents introduced during the
Espenscheid Deposition (Opposer’s Exhibits 2-6, 10, 12-19),
to testimony proffered by Mr. Espenscheid and Mr. Bagger,
and to opposer’s first notice of reliance. The various
grounds of objection include hearsay, leading questions,
lack of foundation, evidence not admissible by notice of
Opposition No. 91162078
8
reliance, and untimely filing of the testimony and other
evidence.
With respect to opposer’s rebuttal testimony and
second notice of reliance filed during its rebuttal
testimony period, we agree with applicant that the testimony
and other evidence constitute improper rebuttal. Evidence
which should constitute part of opposer’s case in chief, but
which is made of record during the rebuttal period, is not
considered when applicant objects.
Applicant is entitled to an opportunity
to rebut, during its testimony period,
any testimony and evidence proffered in
support of the allegations in the notice
of opposition. This opportunity is
foreclosed if opposer withholds the
evidence until its rebuttal testimony
period, which is intended to be limited
to denials, refutations or explanations
of applicant’s testimony and evidence.
(Emphasis added).

General Electric Company v. Graham Magnetics Incorporated,
197 U.S.P.Q. 690, 692 n.5 (T.T.A.B. 1977). Notwithstanding
opposer’s argument that testimony and evidence submitted
during the rebuttal period directly rebutted applicant’s
testimony, we find that opposer’s rebuttal testimony and
evidence is merely cumulative evidence relating to the use
of “Vegas” as a reference to “Las Vegas,” and the
association between Las Vegas and playing cards.3 Opposer’s

3 With respect to its second notice of reliance, opposer
explained that “The materials are relevant to demonstrate that
the term ‘VEGAS’ is used primarily to refer to the city of Las
Opposition No. 91162078
9
rebuttal testimony did not refute or explain applicant’s
testimony, but rather added to its proofs made as part of
its case in chief. Accordingly, the testimony and evidence
submitted by opposer during its rebuttal testimony period
have not been considered.4
With respect to the remaining objections, because an
opposition is akin to a bench trial, the Board is capable of
assessing the proper evidentiary weight to be accorded the
testimony and evidence, taking into account the
imperfections surrounding the admissibility of such
testimony and evidence. Thus, we have considered the
evidence, keeping in mind the objections, and have accorded
whatever probative value the testimony and evidence merits.

B. Federal Registration of Geographic Trademarks
As applied to geographic marks, Section 2 of the Lanham
Act provides the following:
1. If the geographic term is deceptive under Section
2(a), the term may not be registered under any
circumstances;

Vegas, Nevada. . . and to illustrate a connection between playing
cards and the city of Las Vegas, NV.”

4 Nevertheless, even if we considered such testimony and
evidence, it would not change our decision on the merits because
such matter was unnecessarily cumulative, and it failed to
include any evidence relating to whether the purported misleading
use of VEGAS was a material fact in the purchasing decision.

Opposition No. 91162078
10
2. If the geographic term is “primarily
geographically descriptive” under Section 2(e)(2),
the term may be registered on the Supplemental
Register or upon a showing of acquired
distinctiveness; or,
3. If the geographic term is “primarily
geographically deceptively misdescriptive” under
Section 2(e)(3), the term may not be registered
under any circumstances. 5

1. Section 2(a) - Geographically Deceptive Marks.
With respect to the interplay between Section 2(a) and
Section 2(e)(3), the Court of Appeals for the Federal
Circuit held that the test for determining whether a mark
is geographically deceptive under Section 2(a) is the same
as determining whether a mark is primarily geographically
deceptively misdescriptive under Section 2(e)(3). In re
California Innovations Inc., 329 F.3d 1334, 66 USPQ2d 1853,
1856 (Fed. Cir. 2003). The Court explained that the
analysis for primarily geographically deceptively
misdescriptive marks focuses on the deception of, or fraud

5 There is an exception. If a primarily geographically
deceptively misdescriptive mark has been in lawful use in
commerce since before December 8, 1993 (the date of enactment of
the NAFTA Implementation Act), it may be registered on the
Supplemental Register or it may be registered on the Principal
Register under the provisions of Section 2(f) upon a showing of
acquired distinctiveness.
Opposition No. 91162078
11
on, the consumer, and, therefore, requires a showing of
public deception (i.e., that consumers have been misled).
Id. To ensure a showing of deceptiveness, a plaintiff (or
the Patent and Trademark Office) must prove that the goods-
place association made by the consumer is material to the
consumer’s decision to purchase the goods. Id. at 1857-
1858. “The addition of a materiality inquiry equates this
test with the elevated standard applied under §1052(a).”
Id. Because the same legal standard applies to both
sections 2(a) and 2(e)(3) of the Lanham Act, the Court
instructed the Patent and Trademark Office to address the
deceptiveness of a geographic term under the ambit of
Section 2(e)(3) rather than Section 2(a). Id. at 66 USPQ2d
1858. Accordingly, we analyze whether the mark VEGAS for
playing cards is primarily geographically deceptively
misdescriptive under Section 2(e)(3).

2. Section 2(e)(2) – Primarily Geographically
Descriptive.

The distinction between a mark that is primarily
geographically descriptive or primarily geographically
deceptively misdescriptive is whether the geographic origin
of the goods is in the place named in the mark. In re
Jacques Bernier Inc., 894 F.2d 394, 13 USPQ2d 1725, 1726
(Fed. Cir. 1990). In the case sub judice, opposer has not
tried to prove that applicant’s playing cards are made or
Opposition No. 91162078
12
sold in Las Vegas. Mr. Espenscheid testified that
applicant’s playing cards are printed in China, while
applicant is located in Michigan. Mr. Espenscheid also
testified that all playing cards used in Las Vegas are
manufactured elsewhere. Accordingly, the only issue before
us, and the only one the parties have argued, is whether
the mark VEGAS is primarily geographically deceptively
misdescriptive when applied to playing cards.

3. Section 2(e)(3) – Primarily Geographically
Deceptively Misdescriptive.

To prove that VEGAS for playing cards is primarily
geographically deceptively misdescriptive, opposer must
prove the following:
a. The primary significance of VEGAS is a
generally known geographic location;
b. The consuming public is likely to believe
that VEGAS indicates the origin of the
playing cards, when in fact the playing cards
do not come from Las Vegas; and,
c. The misrepresentation is a material factor in
the consumer’s decision.
In re California Innovations Inc., 66 USPQ2d at 1858.

Opposition No. 91162078
13
a. The Primary Significance Of “Vegas” Is “Las
Vegas”.

The first prong of the test is whether the mark’s
primary significance is a generally known geographic
location. The evidence clearly demonstrates that the word
“Vegas” is an abbreviation for Las Vegas.
Las Vegas . . . 1. often shortened to
Vegas. City, of Clark co. (sic), SE
corner of Nevada. . . major tourist
resort featuring legalized gambling and
glitzy hotels.

Merriam-Webster’s Geographical Dictionary, supra at 633.
The remaining documents in opposer’s first notice of
reliance make it clear that “Vegas” is a commonly used and
understood reference to Las Vegas, Nevada. Further the
record establishes that Las Vegas, Nevada is a generally
known geographic location.
b. There Is A Tenuous Goods-Place Association.
The second prong of the test requires proof that the
public is likely to believe that applicant’s playing cards
originate in Las Vegas. “Under this prong, we consider
whether the public would reasonably identify or associate
the goods sold under the mark with the geographic location
contained in the mark.” In re Save Venice New York Inc.,
259 F.3d 1346, 59 USPQ2d 1778, 1783 (Fed. Cir. 2001).
Opposer has submitted evidence sufficient to prove that Las
Vegas is well-known for, inter alia, casinos and gambling.
Because playing cards are closely associated with gambling,
Opposition No. 91162078
14
there is an indirect association between Las Vegas and
playing cards. In re Save Venice New York Inc., 59 USPQ2d
at 1784 (“the registrability of a geographic mark may be
measured against the public’s association of that region
with both its traditional goods and any related goods or
services that the public is likely to believe originate
there. The essence of the test is whether consumers are
likely to be confused by the source of the related goods
identified by a distinctive geographic mark.” (Emphasis
added)). Despite the lack of any evidence demonstrating a
consumer association directly between playing cards and Las
Vegas, because of the association of Las Vegas with casinos
and gambling and the association of gambling with playing
cards, consumers may associate playing cards with Las Vegas.
Accordingly, we find that there is a goods-place association
between playing cards and Las Vegas.
c. There Is No Evidence Regarding Whether The
Use Of The Mark VEGAS Is A Material Factor In
The Consumer’s Decision To Purchase.

The final prong of the three-part test requires proof
that the misleading goods-place association is a material
factor in the customer’s decision to purchase applicant’s
playing cards. The materiality prong supports the statutory
requirement of deception. In re Les Halles De Paris J.V.,
334 F.3d 1371, 67 USPQ2d 1539, 1542 (Fed. Cir. 2003); In re
California Innovations Inc., 66 USPQ2d at 1856.
Opposition No. 91162078
15
Opposer argues that it has met the materiality factor
by proving that there is a market for canceled casino cards
from Las Vegas casinos. By demonstrating that there is a
market for canceled casino cards, opposer asserts that it
has proven that consumers are interested in obtaining cards
that have an origin in or are associated with Las Vegas. In
addition, opposer argues that the Board may infer that the
geographic deception is a material factor in the purchasing
decision when there is a “heightened” goods-place
association.
Neither opposer’s evidence, nor its arguments, is
persuasive. Although the evidence demonstrates that
consumers are interested in obtaining cards that were used
in casinos, the evidence does not establish that they are
interested in purchasing playing cards that were
manufactured or used in Las Vegas. Opposer’s witness Daniel
Espenscheid testified that the canceled playing cards were
good souvenirs because they “were actually in play on the
tables,” not because they were from Las Vegas. (Espenscheid
Dep. pp. 39-40). The entities selling the canceled playing
cards tout that the cards were formerly used in the casinos,
as opposed to being made or used in Las Vegas. The
representative decks of canceled playing cards all have a
seal with a legend to the effect that “These cards were used
in actual play in the casino.” (Espenscheid Dep. pp. 36-40;
Opposition No. 91162078
16
Exhibits 20-26). Only Espenscheid Exhibit 20, the deck from
the MGM Grand, referenced Las Vegas. In that instance, the
commercial impression engendered therein is that the MGM
Grand is located in Las Vegas, as opposed to the
identification of Las Vegas as the geographic origin of the
cards.
We decline to draw an inference that the geographic
misrepresentation is a material factor in the purchasing
decision. First, as indicated in the previous paragraph,
the evidence shows that consumers purchase canceled casino
playing cards because they were used in casinos, not because
they were made or used in Las Vegas.
Second, to raise an inference of materiality, opposer
must show a “heightened” association between the goods and
the geographic location. In re Les Halles De Paris J.V., 67
USPQ2d at 1542 (the Patent and Trademark Office may raise an
inference of materiality with evidence that the place is
famous as a source of the goods at issue).6 The record does
not show that a material reason for a tourist’s choice of
playing cards is that the cards were made or used in Las
Vegas. At best, the evidence (including opposer’s rebuttal
evidence) shows that tourists want cards that were used in

6 But see, In re California Innovations Inc., 66 USPQ2d at 1857
(while the goods-place association may raise an inference of
deception, a mere inference is not enough to establish whether
the misrepresentation was a material factor in the consumer’s
decision).
Opposition No. 91162078
17
casinos, not necessarily cards made or used in Las Vegas.
The fact that the casinos are located in Las Vegas does not
mean that Las Vegas and casinos are one and the same.
We disagree with opposer’s conclusion that “the goods-
place association between Las Vegas and playing cards is so
strong that the Board may presume that the geographical
connection between the place and the goods led to the
consumer’s decision to purchase the goods.” (Opposer’s
Brief, p. 23). This is simply attorney argument without
support in the record. As noted above, the goods-place
association between playing cards and VEGAS is merely
indirect, attained through their association with the casino
and gambling services associated with Las Vegas.
In view of the foregoing, we find that, as applied to
playing cards, VEGAS is neither primarily geographically
descriptive nor primarily geographically deceptively
misdescriptive.
Decision: The opposition is dismissed.