Monday, February 10, 2014

Test Your TTAB Judge-Ability: Are BUFFALO and BUFFALO BUCKS Confusable for Gaming Machines?

Aristocrat Technologies sought to register the mark BUFFALO for "gaming machines, namely, devices which accept a wager," but Examining Attorney Giancarlo Castro refused registration under Section 2(d) in view of the registered mark BUFFALO BUCKS for "gaming machines and operating software that runs thereon." Aristocrat appealed, arguing that its games are slot machines whereas registrant's are bingo machines. Moreover it pointed to seven (7) existing registrations for marks containing the word BUFFALO for goods or services related to gaming (including its own registration for BUFFALO MOUNTAIN). How do you think this came out? In re Aristocrat Technologies Australia Pty Ltd, Serial No. 77753502 (February 4, 2014) [not precedential].

The Board found that applicant's goods are encompassed within the identification of goods in the registration: i.e., they are a sub-set of registrant's gaming machines. The Board therefore presumed that these goods travel in the same channels of trade to the same classes of consumers. Applicant contended that it manufactures slot machines and the previous owner of the cited registration sold only bingo machines - a different class of gaming. Irrelevant, said the Board: "It is well-established ... that we are bound by the identification as written in the registration and cannot limit registrant’s goods, channels of trade, or classes of customers to what any evidence shows them to be."

As to the marks, the Board observed for the zillionth time that, because the goods are in part identical, a lesser degree of similarity between the marks is necessary to support a finding of likely confusion. It found the word "Buffalo" to be the dominant portion of registrant's marks, both because of its prominence as the first word in the mark and because "bucks" has a descriptive connotation in connection with gaming devices.

Applicant lamely argued that, in use, the marks are displayed differently, but of course that was irrelevant, since the Board must consider these two standard character marks without reference to any style, color, font size, or other manner of use.

The Board concluded that the marks are similar in appearance, sound, connotation, and commercial impression.

Applicant maintained, without evidentiary support, that some of its customers are "regular and knowledgeable slot players" who are not likely to be confused, while others are only occasional slot players.The Board noted that "the standard of care is that of the least sophisticated purchaser" [Heaven help us! - ed.], and in any event, even sophisticated purchasers are not immune to source confusion.

Finally, on its last throw of the dice, applicant pointed to seven current registrations for marks containing the word BUFFALO, for goods or services related to gaming. Applicant argued that these registrations show that many BUFFALO marks can co-exist: namely, BUFFALO BILL'S RESORT & CASINO (in word and design forms), BUFFALO MOUNTAIN (owned by this applicant), BUFFALO THUNDER RESORT & CASINO and Design, PRIMM VALLEY CASINO RESORTS BUFFALO BILL'S PRIMM VALLEY WHISKEY PETE'S and Design, SENECA BUFFALO CREEK CASINO, and THUNDERING BUFFALO.

The Board found these registrations to be unpersuasive for several reasons. First, each of these marks (which include words in addition to BUFFALO) makes a commercial impression less similar to the cited mark than does applicant's mark BUFFALO. Second, these registrations do not show that BUFFALO has some descriptive or suggestive significance in the gaming field such that the word should be considered to be a weak formative. Third, there was no proof of the manner or extent of use of these marks, and therefore no basis on which to conclude that consumers distinguish these marks based on the differences in the marks. And fourth, each case must be decided on its own merits based on the record presented.

Balancing the relevant du Pont factors, the Board found confusion likely and it affirmed the refusal.

Read comments and post your comment here.

TTABlog note:  So how did you do? Do you think this is a WYHA?

Text Copyright John L. Welch 2014.


At 9:01 AM, Anonymous CRH said...

I agree with the Board’s decision to affirm the examining attorney’s refusal to register the applicant’s mark as it is likely to cause confusion. I was equally unpersuaded by the applicant’s arguments, particularly the arguments that a) the marks differ in the manner in which they are used and b) that “some of the end users of its products are regular and knowledgeable slot players who are unlikely to experience confusion.” In re Aristocrat Technologies Australia Pty Ltd, Serial No. 77753502 , 10.

As the Board noted, the marks are essentially identical. Although the registered mark is BUFFALO BUCKS, BUFFALO is the dominant term and as such, applicant’s mark offers no differentiation and fails the sight, sound, and meaning test. The marks are spelled and pronounced the same way, and both have the same meaning. Quoting In re U.S. Show Corp., 229 USPQ at 709, the Board observed that “Applicant’s mark would appear to prospective purchasers to be a shortened form of registrant’ mark.”

Citing the fourth du Pont factor, the Board was also correct to note that it is irrelevant if some of the Applicant’s customers are “regular and knowledgeable slot players who are unlikely to experience confusion.” Id. It is not only “regular and knowledgeable” consumers that trademark law is meant to protect. “The standard of care is that of the least sophisticated purchaser.” Id. Given the mark’s inability to stand against the du Pont factors test, as well as the Applicant’s weak arguments, I would not have appealed the examining attorney’s refusal to register.


Post a Comment

<< Home