Tuesday, December 29, 2009

Precedential No. 49: TTAB Affirms Surname Refusal of "BINION"; Renown of Binion Family Does Not Equal Acquired Distinctiveness

Applicant Jack B. Binion rolled snake eyes in his attempt to register the marks BINION and BINION'S for "casino and gaming services" and "hotel and bar services." The Board affirmed Section 2(d) and 2(e)(4) refusals to register his marks, finding them to be (1) confusingly similar to the registered mark BINION'S ROADHOUSE for restaurant services [ROADHOUSE disclaimed], and (2) primarily merely surnames. In re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009) [precedential].

Likelihood of Confusion: The Board found the involved marks to be similar in sound, appearance, and meaning, and very similar in overall commercial impression. Third-party registration evidence regarding the relatedness of the services, on balance, weighed in favor of the refusal to register, and the evidence showed that "casinos, hotels, bars and restaurants are often housed under the same roof."

Applicant argued that he owns three registrations for marks comprising JACK BINION or JACK BINION'S for "restaurant services" that issued over the cited registration, and that these registrations "have peacefully coexisted with the cited registration for a number of years." [One is for JACK BINION'S in standard character form for restaurant services, while the other two are for JACK BINION in the form of a signature, one for "casino, hotel, restaurant and bar services" and the other for "restaurant services."] The Board found that the applied-for marks BINION and BINION'S are "actually closer to the registered mark" than the three prior marks. Applicant's assertion of no actual confusion is of little probative value in this ex parte context.

Applicant feebly argued that the cited mark is used at a single restaurant located in Hendersonville, North Carolina, and that the mark is often used with a design. The Board pointed out that these arguments are irrelevant to the Section 2(d) analysis, which is based on the mark shown in the cited registration, nationwide in scope.

And so it affirmed the Section 2(d) refusal to register.

Primarily Merely a Surname: Examining Attorney Evelyn Bradley established a prima facie case under Section 2(e)(4): 1416 listings of the surname "Binion" in a nationwide telephone directory search; the fact that Applicant is named Jack Binion; the lack of any other meaning for "Binion"; and the "fact" that "Binion" looks and sounds like a surname.

Applicant attempted to overcome this refusal by contending that the term BINION has historical significance in the gaming industry, relying on a "variety of references to Mr. Binion and other family members in the printed press and on the Internet." The Board, however, did not find that "Mr. Binion's personal history is in any way so extraordinary that he warrants treatment under the 'historical person' exception to the surname refusal." Although he "has played a significant role in the gaming industry in Las Vegas, his notoriety in this regard is not so remarkable or so significant that he is a historical figure as contemplated by the case law." [Jack Binion is no John Philip Sousa - ed..]

The Board then considered Applicant's claim of acquired distinctiveness. Although the involved applications were filed based on intent to use, a Section 2(f) claim may be made if "as a result of the applicant's use of the mark on other goods or services, the mark has become distinctive of the goods or services in the intent-to-use application," and if "the previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins."

The Board found, however, that the involved marks BINION and BINION'S are not the "same" marks as the previously registered marks JACK BINION and JACK BINION'S; i.e., they are not legally equivalent.

Applicant submitted evidence regarding the publicity about Mr. Binion and his family, establishing that Binion and other family members are "legends" in the Las Vegas gaming industry. However, "[a]ll of the evidence submitted by applicant shows that purchasers would regard 'Binion' or 'Binion's' as a surname; it is the surname of Jack, as well as Benny, Jack's father, and Becky, Jack's sister. The record is devoid of any use of the term 'Binion' or 'Binion's' as a trademark or service mark, let alone use to an extent sufficient to show acquired distinctiveness."

Simply put, the renown of Jack Binion and the Binion family name in the gaming industry does not establish that 'Binion' is no longer perceived as a surname by purchasers, but rather as a service mark for services emanating from applicant."

And so the Board affirmed the Section 2(e)(4) refusal.

TTABlog comment: Too many Binions spoiled the broth? Suppose BINION'S is recognized in Las Vegas as a service mark owned by this Applicant, but in the rest of the country it is seen as just another surname. Would that be enough to overcome the Section 2(e)(4) bar to registration?

TTABlog postscript: Ryan Gile, at his Las Vegas Trademark Attorney blog, comments here on the Binions and on this decision.

Text Copyright John L. Welch 2009.


At 11:42 AM, Anonymous Anonymous said...

As to acquired distinctiveness, this is either a terrible decision or there is otherwise a gross failure by legal counsel in submitting evidence of secondary meaning. It seems to me that the applicant makes use of the term BINION'S on the casino itself and all over the website associated with the casino at www.binions.com. Seems like WAY more than what is needed to establish acquired distinctiveness to me. Perhaps the applicant cannot claim this acquired distinctiveness because of the sale of the casino and thus the use is not attributable to him any more?

In any event, the name BINION is incredibly famous in connection with casino services. While articles may refer to the full name of the various members of the BINION family, if you mention just BINION to the average gambler, they are going to know exactly what you are talking about-- that is exactly what secondary meaning is looking for.

Someone dropped the ball here. Hope for their sake that they don't end up in a hole in the desert.


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