Thursday, June 18, 2009

"DUNES" on Slot Machines not a Proper Specimen for Casino Services, Says TTAB

Applicant Bellagio, LLC crapped out in its attempt to register the mark DUNES for casino services. Its specimen of use showed the mark on slot machines, but that was not enough to create a direct association between the mark and Applicant’s casino services. And so the Board affirmed the PTO's refusal to register under Section 45 of the Trademark Act. In re Bellagio, LLC, Serial No. 77175007 (June 2, 2009) [not precedential].

Bellagio's specimen was a color photograph (above) of a slot machine. It argued that "DUNE-branded slot machine appear throughout the Bellagio casino floor. Consumers encountering the DUNES slot machines are undoubtedly aware that the machines themselves are not for sale." According to Bellagio, the machines are used for gaming, which is the service offered by Applicant, and therefore there is a direct association between the DUNES mark and its casino services.

The Board pointed out that "[t]o be an acceptable specimen of use of the mark in the sale or advertising of the identified services, there must be a direct association between the mark sought to be registered and the services specified in the application, and there must be sufficient reference to the services in the specimens to create this association." The mark must be "readily perceived as identifying the source of the services."

Bellagio casino

Here, Bellagio's specimen would be adequate as a trademark specimen for slot machines, but the specimen fails to mention the recited services. Moreover, there was no evidence that "placing a mark on a slot machine is a typical manner for a casino to use its mark in connection with casino services." And there was no proof that Applicant used the DUNES mark on signs, advertising, or promotional material for its casino services.

Applicant appears to argue that because it is located on the former site of The Dunes hotel and casino, which operated from 1955 until 1993, and further because it utilizes the mark DUNES on slot machines in its casino, patrons of its casino will directly associate the DUNES mark with its casino services and not simply the slot machines upon which the mark appears.

The Board further noted that casino slot machines often feature themed graphics, like Wheel of Fortune or I Dream of Jeanie. Nonetheless, according to Applicant, customers encountering a DUNES slot machine "must presume that DUNES does not simply indicate a slot machine, possibly themed on the hotel and casino formerly occupying the site, but rather as a source indicator for applicant's casino services in which the slot machine is located.

The Board found that this association is not direct but "requires at least one mental step." And the consumer may also have to be "aware of the history of the former Dunes hotel and casino in order to make this association."

Consequently, the Board affirmed the refusal to register.

TTABlog note: What does it mean to "crap out"? See the "Craps Glossary" (here).

Text Copyright John L. Welch 2009.


At 6:53 AM, Anonymous raphnix said...

I never thought that the slot machine still exist in these popular casino clubs.

At 11:34 AM, Blogger Unknown said...

The decision is ridiculous. If casino services aren't shown by a sign right over the top of the casino service (clearly a slot machine is a casino service, isn't it?), what specimen would be better? The Board is expert on what constitutes advertising for casino services? Casinos are littered with these signs, and consumers are clearly aware that each is a casino slot machine offering its branded form of casino services in competition with other brands. Wheel of Fortune, Megabucks, Dunes. These are branded TO consumers for encouraging them to play a slot machine (a service) not buy a slot machine.

At 2:36 PM, Anonymous Griff said...

I disagree. Even though gamblers can't buy a slot machine, doesn't mean that the name on the slot machine is a service mark for casino services. The same machines (e.g. Wheel of Fortune) show up in lots of different casinos so I think customers are used to seeing those terms as trademarks for the machines themselves rather than for casino services. You can't (easily) buy a full sized arcade game but that doesn't mean FROGGER or GALAGA is a service mark for arcade services. It's a trademark for the video game itself. Same goes for slot machines.

At 6:12 PM, Anonymous Josh said...

I echo Griff's comment above. The names on slots are typically marks for the slot machines, and sold directly to customers (the casinos). Seasoned gamblers are accustomed to noting (and then ignoring) the same brands of slot machines in casinos all over the world. Very rarely are slots branded with the name of the establishment -- when they are, it's a trademark for the machine itself.


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