• Abstract and Figures
• Public Full-text

Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov ESTTA Tracking number: ESTTA178902 Filing date: 12/05/2007 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Proceeding 76590702 Applicant Jack B. Binion Applied for Mark BINION' S Correspondence Sana Hakim Address Bell, Boyd & Lloyd LLP P.O. Box 1135 Chicago, IL 60690-1135 UNITED STATES [email protected], [email protected] Submission Appeal Brief Attachments Appeal Brief for Binion's.pdf ( 90 pages )(9553467 bytes ) Filer's Name Kathryn Starshak Filer's e-mail [email protected], [email protected], [email protected] Signature /Kathryn Starshak/ Date 12/05/2007 IN THE UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD Applicant: Jack B. Binion ) ) Serial No.: 76/590,702 ) ) Mark: BINION’S ) Alina S. Morris ) Examining Attorney Filing Date: May 6, 2004 ) Law Office 105 ) ) Commissioner for Trademarks P.O. Box 1451 Alexandria, VA 22313-1451 APPLICANT’S APPEAL BRIEF Applicant Jack B. Binion (“Applicant”), by his attorneys, hereby submits this Appeal Brief in support of Application Serial No. 76/590,702 for the mark BINION’S. 882940/D/1 1 TABLE OF CONTENTS Page TABLE OF AUTHORITIES ........................................................................................................... .. 3 INTRODUCTION ........................................................................................................................... .. 4 .._M‘___....._...~,._._..__..._.._..___.._...__..__,.A,,.,_.__..,,,,,.. STATEMENTS OF FACTS ........................................................................................................... .. .4 __ ARGUMENT .................................................................................................................................. .. .6 A. A_Qp1icant’s Mark is Not Confusingly Similar to the Cited BINION’S ROADHOUSE Mark ............................................................................................... .. 6 Q App1icant’s Mark Is Not Primarily Merely A Surname .................................... .. 7 1. The BINION’S Mark Has Secondary Meaning In the Gaming Industry ........ .. 7 CONCLUSION ................................................................................................................................ .. 9 8 82940/D/1 2 TABLE OF AUTHORITIES Page Inwood Laboratories, Inc. v. Ives Laboratories, Inc., 456 U.S. 844, 214 U.S.P.Q. 1(1982) .................................................................................................................. .. 7 882940/D/1 3 I. INTRODUCTION Pursuant to a Notice of Appeal filed March 21, 2006, Applicant, Jack B. Binion (“Applicant”), has appealed the Trademark Examining Attorney’s refusal to register the mark BINION’S on the grounds that the mark is allegedly confusingly similar with Registration No. 1,996,212 for the mark BlNION’S ROADHOUSE. In addition, Applicant hereby appeals the Examining Attomey’s refusal to register the BlNlON’S mark under Section 2(e)(4) of the Lanham Act on the ground that the mark is primarily merely a surname. Finally, Applicant appeals the Examining Attomey’s finding that the BINION’S mark has not acquired distinctiveness. Applicant respectfully requests that the Trademark Trial and Appeal Board (“T.T.A.B.”) reverse the Examining Attomey’s decision on all three issues and approve the captioned application for publication. II. STATEMENT OF FACTS On May 6, 2004, Applicant filed an intent to use application to register the mark BINlON’S for “casino and gaming services” in Class 41 and “hotel, restaurant and bar services” in Class 43. On December 8, 2004, Applicant received an Office Action wherein the Examining Attorney initially refused registration of Applicant’s mark under 15 U.S.C. § 1052(d) on the grounds that the BINION’S mark is allegedly confusingly similar to prior Registration No. 1,996,212 for the mark BlNlON’S ROADHOUSE covering restaurant services. In addition, the Examining Attorney refused registration of the BINION’S mark on the grounds that the mark is primarily merely a surname under 15 U.S.C. § 1052(e)(4). Finally, the Examining Attorney asked Applicant to provide his citizenship and to submit a standard character claim. Thereafter, Applicant responded to the Office Action arguing against the citation of Registration No. 1,996,212 by deleting “restaurant services” from the subject application. In 882940/D/l 4 addition, Applicant responded to the surname refusal by submitting arguments that the BINION’S mark has acquired distinctiveness in the gaming industry. Applicant also entered Applicant’s citizenship and the requested standard character claim into the record. In an Office Action dated June 29, 2005, the Examining Attorney withdrew the surname refusal under Section 2(e)(4), accepted the standard character claim and noted that Applicant entered his citizenship into the record. However, the Examining Attorney continued and made final the Section 2(d) refusal based on the BINION’S ROADHOUSE registration. Before Applicant could respond to the June 29, 2005 Office Action, the Examining Attorney issued a superseding Office Action on September 21, 2005 in which the Examining Attorney reinstated the surname refusal stating that Applicant submitted insufficient evidence to establish that Applicant’s mark has acquired distinctiveness. On March 21, 2006, Applicant filed a Request for Reconsideration and a Notice of Appeal arguing against both the likelihood of confusion refusal and the surname refusal. On May 11, 2006, the Examining Attorney issued a fourth Office Action clarifying that the surname refusal issued in the September 21, 2005 Office Action was not a final refusal because Applicant had submitted additional information on the secondary meaning of the BINION’S mark. Nonetheless, the Examining Attorney made final the refusal to register the mark in the May 11, 2006 Office Action both on the grounds of a likelihood of confusion with the BINION’S ROADHOUSE mark and on the grounds that the mark is primarily merely a surname and has not acquired distinctiveness. In response, Applicant submitted a motion to the Trademark Trial and Appeal Board requesting that the Board reinstate the Appeal filed by Applicant on March 21, 2006. The Appeal was subsequently reinstated, and Applicant seeks this Appeal against the 882940/D/l 5 background described above. Specifically, Applicant respectfully requests that the Examining Attorney’s final refusal to register the BINION’S mark be reversed. III. ARGUMENT A. APPLICANT’S MARK IS NOT LIKELY TO BE CONFUSED WITH THE CITED MARK Applicant submits that Applicant’s mark is not likely to be confused with the BINION’S ROADHOUSE mark (the “Cited Mark”) because Applicant owns prior registrations for marks containing “BINION” for casino and restaurant services. 1. Applicant Owns Prior Registrations For Marks Containing Binion. Applicant owns the following prior registrations for marks containing “BINION”: JACK BINION’S (Registration No. 2,150,944), issued in 1998 for restaurant services; JACK BINION (Stylized) (Registration No. 2,444,446), issued in 2001 for casino, hotel, restaurant and bar services; and JACK BINION’S (Stylized) (Registration No. 2,607,096), issued in 2002 for casino and gaming services; hotel, restaurant and bar services. True and accurate copies of the TARR records for these registrations are attached herewith as Exhibit A. These prior registrations all contain the term “BINION” and were allowed to register not only for casino, hotel and bar services, but restaurant services as well. Indeed, Applicant’s prior registrations were approved for registration despite the existence of the Cited Mark, which issued in 1996, two years before the earliest of Applicant’s prior registrations. Thus, at the time the PTO determined that there was no likelihood of confusion between the Cited Mark and Applicant’s prior “BINION” marks. In this instance, there is even less of a risk of a likelihood of confusion between the BINION’S mark and the Cited Mark because the subject application does not cover “restaurant services,” the only services covered by the Cited Mark. Moreover, Applicant’s prior “BINION” marks have co-existed on the Principal Register 882940/D/ 1 6 with the Cited Mark for a number of years. Thus, consumers have been able to distinguish between Applicant’s “BINION” marks and the Cited Mark. Accordingly, there should be no likelihood of confusion between Applicant’s BINION’S mark and the Cited Mark. Applicant respectfully requests that the 2(d) refusal based on the BINION’S ROADHOUSE mark be Withdrawn. B. APPLICANT’S BINION MARK IS NOT PRIMARILY MERELY A SURNAME The Examining Attorney has refused registration of the mark BINION’S on the grounds that the mark is allegedly primarily merely a surname. In response, Applicant respectfully submits that the BINION’S mark has become distinctive of Applicant’s services. 1. Applicant’s BINION’S Mark Has Become Distinctive Of Applicant’s Goods And Services. An applicant can overcome a Section 2(e)(4) refusal by submitting evidence that the mark has become distinctive in commerce of the goods or services set forth in the application. _S_e§ Trademark Manual of Procedure § 1212.03 (citing 37 C.F.R. § 2.41). Such evidence may include “appropriate evidence tending to show that the mark distinguishes such goods.” Id. In order to prove that a mark has acquired secondary meaning, “a manufacturer must show that, in the minds

Load more

  91

Copy Link