Tuesday, July 13, 2021

Two Prior Registrations and DuPont Factor 13 Save "ELDORADO RESORT CASINO RENO" From a Section 2(d) Refusal

The USPTO refused to register the mark ELDORADO RESORT CASINO RENO (in standard characters) for “Bar services; Hotel services; Restaurant services; Resort hotel services,” finding confusion likely with six registered marks containing the term EL DORADO for overlapping services. On this appeal, the Board found the marks to be confusingly similar and the channels of trade and classes of consumers presumably identical. But Applicant owns prior registrations for ELDORADO HOTEL CASINO RENO in standard character and design forms, and the Board concluded that, as in Strategic Partners, the thirteenth duPont factor "tipped the scale" and outweighed the other factors, "making confusion unlikely under the facts of this case." In re Eldorado Resorts LLC, Serial No. 88514634 (July 8, 2021) [not precedential] (Opinion by Judge Melanye K. Johnson).

Under the 13th DuPont factor, the Board must consider "any other established fact probative of the effect of use." Cases involving an applicant's prior registrations "customarily determine whether substantially similar marks should be allowed to coexist on the register because of an applicant's prior registration of a similar mark for the involved goods or services."

Applicant pointed to its ownership of registrations for ELDORADO HOTEL CASINO RENO in standard character form and in the word-plus-design form shown below, for cabaret shows and hotel and restaurant services. It argued that this is the type of situation contemplated by Strategic Partners, which involved an application for the mark ANYWEARS and a prior registration for the mark ANYWEAR, the latter registration having coexisted with the blocking registration for more than 5 years. [TTABlogged here].

In applying the 13th factor, the Board considered whether there was any meaningful difference between applicant's proposed mark and its prior registered marks, whether the services are identical, and the length of time the prior registrations had co-existed with the cited registrations. 

The Board acknowledged that, in contrast to Strategic Partners, the registrations involved here had not co-existed for more than five years, but it observed that more than just the length of the co-existence must be considered. It observed that the proposed mark and the prior standard character mark differ only by the disclaimed terms "RESORT" and "HOTEL," and the proposed mark does not differ meaningfully from the word-plus-design mark. 

The Board further noted that "not one of the examining attorneys who examined the cited registrations refused registration of those marks based on a likelihood of confusion with the marks of applicant's prior registrations." The prior registrations were issued in 1999 and 2000 and so were not vulnerable to a Section 2(d) challenge.

Thus, although the first, second, and third DuPont factors weigh in favor of finding a likelihood of confusion, we find, as in Strategic Partners, that the thirteenth factor tips the scale and outweighs them all, making confusion unlikely under the specific facts of this case.

And so the Board reversed the refusal to register

Read comments and post your comment here.

TTABlogger comment: Hat tip to FOB Bill McGrath.

P.S.: The Morehouse defense, applicable in inter partes proceedings, is not interpreted so liberally.

Text Copyright John L. Welch 2021.


At 8:05 AM, Anonymous Anonymous said...

giving in to the temptation of the 13th factor, or not: things to consider when success is dependent on you prevailing on the 13th factor


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