Friday, December 16, 2011

TTAB Affirms Genericness Refusal of THREE CARD POKER for Gaming Services

Rejecting Applicant's Thermos and Teflon surveys as fundamentally flawed, the Board affirmed a refusal to register THREE CARD POKER for "entertainment services, namely, providing live games of chance in gaming establishments," on the ground of genericness. In re Shuffle Master, Inc., Serial No. 77394063 (December 8, 2011) [not precedential].

Evidentiary squabbles: Examining Attorney Katy Halmen successfully objected to Applicant's untimely submission of a declaration with its reply brief. Applicant argued that this was tardy submission was permissible because the Examining Attorney had included new evidence in her denial of its request for reconsideration and Applicant had no chance to reply. The Board pointed out that the Examining Attorney is allowed to submit new evidence during reconsideration. If Applicant wanted to submit more evidence, it should have requested that the Board remand the case to the PTO.

Genericness: The Examining Attorney relied on dictionary definitions of "poker," "Texas Hold 'Em", "Draw Poker" and "Stud Poker" in contending that the genus of Applicant's services is "providing three card poker games of chance." Applicant urged that this was too narrow and that the proper genus is defined by its recitation of services.

The Board looked to Applicant's own submission describing its services, which made clear that the recited services encompass a particular version of poker. Therefore, the genus "may be accurately identified as providing live games of chance in gaming establishments, including a variation of the game of poker."

Next, the Board deemed the relevant consumers to be the general public who encounter games of chance in gaming establishments.

The jackpot question was whether these consumers understand THREE CARD POKER to refer primarily to the genus of services. Since the designation at issue is a phrase, dictionary definitions and generic uses of the constituent terms would not suffice to show genericness. Pursuant to American Fertility, the Board must discern the meaning of the phrase as a whole.

The Board found that the Examining Attorney had met her burden of proof. She relied on various Internet excerpts and LEXIS/NEXIS articles referring to "three card poker." Applicant contended that these items consisted of "nominative uses" referring to Applicant, and that many of the articles refer to licensed uses of its mark. The Board was not persuaded. It asserted that Applicant itself uses "three card poker" generically in its patents, as in this excerpt:

The present invention comprises a casino style wagering game against a dealer, comprising the steps of placing a wager, dealing a three card poker hand to each player ... [emphasis supplied by the Board]. [This doesn't seem like a generic use to me, but merely a description of the number of cards dealt - ed.]

Moreover, the licensees use THREE CARD POKER combined with other words and/or designs, rather than the phrase by itself. [see example below].

The Board acknowledged that many of the excerpts and articles use the phrase to refer to Applicant, but that was not enough to overcome the evidence of generic use.

Finally, the Board looked at Applicant's survey evidence, purporting to use both a Thermos and a Teflon style methodology, and found it to be fundamentally flawed. The respondents were not properly screened and the survey choices were poorly worded. Moreover, although Applicant argued that responses saying that "three card poker" referred primarily to a "specific type of poker" were favorable to its position, the Board found the opposite.

The Board concluded that, "despite some evidence of licensed and trademark use," the Examining Attorney had met her burden to prove genericness.

Acquired Distinctiveness: Applicant had applied to register the subject phrase under Section 2(f), thereby conceding that the phrase is not inherently distinctive. For the sake of completeness, the Board considered Applicant's 2(f) argument. It found that the evidence amply demonstrated that the mark is at least highly descriptive, and therefore Applicant's burden to prove acquired distinctiveness is increased.

Proof of use of the phrase since 1995 was not enough. Nor were annual revenues of $30-40 million, sponsorship of tournaments and other promotional activities, unsolicited media coverage, and ownership of other registrations for marks including the same phrase. Although this evidence demonstrates the success and popularity of the game, it is not sufficient to prove acquired distinctiveness in view of the highly descriptive nature of the proposed mark.

And so the Board affirmed both refusals; genericness and mere descriptiveness.

TTABlog comment: If the game was patented and no one could provide the game without a license, why didn't all uses of THREE CARD POKER refer to licensor? And in that case, would any evidence of exclusive use be probative of secondary meaning?

Text Copyright John L. Welch 2011.


At 10:24 AM, Anonymous Alex Butterman said...


Your comment at the end raises a good point. My instinctive answer is no but I cannot think of how to articulate my reasoning or analysis for that.

As I was reading your summary, I kept thinking about how I receive inquiries or requests from clients or prospective clients to register such generic marks and when I probe them and learn their thinking, it seems like they just want to use a trademark application like a patent application. There seems to be a belief that a registration of the mark "3-card poker" would allow them to stop others from using that term on competing services and therefore stop others from offering the competing services.

So I guess the reason why mere evidence of exclusive use is not sufficient to show secondary meaning is the same reason why the first user of a mark (that coins the mark) doesn't mean that mark cannot be considered generic (we see that cited in office actions all the time). The analysis might also have something to do with the overlap between patent law and trademark law? Isn't evidence of exclusive use of a term because of a patent an indication that the term sought to be trademarked is functional and therefore not capable of identifying source?

At 11:48 AM, Anonymous Anonymous said...

There is a Supreme Court case on point to your question. In Kellogg Co. v. National Biscuit Co., 305 US 111 (1938), the Supreme Court was faced with the question whether the name of the patented article, here Shredded Wheat, passed into public domain along with the patent.

More importantly, it appears that this case along with one report by you earlier regarding THREE-STRANDED FLOSS (along with the case dealing with the mark TIRE TIRE TIRE) simply shows that the number 3 is cursed and forever destined to be generic. If I was adidas, I would be afraid, very afraid.


Post a Comment

<< Home