Casino Data Systems

Trademark Trial and Appeal Board

Mar 31, 1999

No. 74622053 (T.T.A.B. Mar. 31, 1999)

Paper No. 22
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB MARCH 31,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Casino Data Systems
________
Serial No. 74/622,053
_______
Bernhard Kreten for Casino Data Systems.
David H. Stine, Trademark Examining Attorney, Law Office
103 (Michael Szoke, Acting Managing Attorney).
_______
Before Hohein, Hairston and Walters, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Casino Data Systems has filed an application to
register the mark OASIS for services which were
subsequently identified as “computer programming services
specifically tailored for use by casino operators in a
gaming environment.”1

1 Application Serial No. 74/622,053 filed January 17, 1995;
alleging dates of first use of July 1, 1991.
Ser No. 74/622,053
2
Registration has been finally refused pursuant to Section
2(d) of the Trademark Act, 15 U.S.C. 1052(d) on the basis
of two registrations, both for the mark OASIS, but owned by
different registrants: Registration No. 1,456,289 for
“computer programs and accompanying instruction manuals
sold as a unit therewith;”2 and Registration No. 1,803,656
for “electronic gaming machines.”3 In addition, the
Examining Attorney refused registration on the ground that
applicant’s specimens do not evidence use of OASIS as a
service mark.
Applicant has appealed. Briefs have been filed, but
an oral hearing was not requested.
We note at the outset that applicant’s mark is
identical to both of the marks in the cited registrations.
Thus, in analyzing likelihood of confusion, we will focus
our attention, as has applicant, on the respective goods
and services.
Registration No. 1,456,289
With respect to the goods in this registration, i.e.,
computer programs and instruction manuals, applicant argues
that third-party software, including registrant’s computer

2 Issued September 8, 1987; Sections 8 & 15 affidavit filed;
alleging dates of first use of September 30, 1979.
3 Issued November 9, 1993; alleging dates of first use of May 16,
1992.
Ser No. 74/622,053
3
programs, cannot be used with applicant’s computer
programming services because it is not compatible. Also,
applicant argues that, even if registrant’s computer
programs were compatible, applicant’s goods are complex and
expensive hardware sold to a “niche” market, i.e., casino
managers and owners, who will not confuse the source of
applicant’s computer programming services for use in a
gaming environment and registrant’s computer programs.
However, as pointed out by the Examining Attorney, in
the case of a registration covering computer programs, with
no restrictions as to the nature of the computer programs
or the channels of trade in which the goods travel, we must
assume that the computer programs cover a wide variety of
applications and travel in all normal channels of trade for
such goods. In re Linkvest S.A., 24 USPQ2d 1716 (TTAB
1992). In view thereof, and because there is no specific
or mutually exclusive limitation in the identification of
goods in the cited registration, we must assume, for our
purposes, that registrant’s computer programs are of a type
which may be used in a gaming environment. Accordingly,
casino purchasing personnel, assumed to be familiar with
OASIS computer programs for use in a gaming environment,
who then encounter applicant’s programming services for use
in the same environment, and sold under the identical mark,
Ser No. 74/622,053
4
are likely to believe that these goods emanate from or are
sponsored by the same source. Compare In re Compagnie
Internationale Pour L’Informatique-Cil Honeywell Bull, 223
USPQ 363 (TTAB 1984) and In re Graphics Technology Corp.,
222 USPQ 179 (TTAB 1984).
With respect to the third-party registrations for
OASIS marks, as the Examining Attorney correctly notes,
such registrations are entitled to little weight on the
question of likelihood of confusion. See In re Hub
Distributing Inc., 218 USPQ 284 (TTAB 1983). They are not
evidence of what happens in the marketplace or that the
public is familiar with the use of the marks therein.
Also, only a handful of the registrations cover
goods/services arguably related to those involved herein.
We should also note that applicant is not without
remedy. Where the goods in a registration are broadly
described, an applicant may seek to restrict the scope of
the description by way of a petition to partially cancel or
restrict the registration. See Section 18 of the Act, 15
U.S.C. §1068, and Eurostar Inc. v. “Euro-Star” Reitmoden
GmbH & Co. KG, 34 USPQ2d 1266 (TTAB 1994).
Registration No. 1,803,656
With respect to the goods in this registration, i.e.,
electronic gaming machines, applicant acknowledges that
Ser No. 74/622,053
5
these goods and applicant’s computer programming services
for use in a gaming environment may be purchased by the
same casino managers and owners. However, applicant argues
that the goods and services are quite different in nature;
that they would be used by different people; and that, more
importantly, the common purchasers (casino managers and
owners) are “an insular, sophisticated group” in the gaming
industry who would not likely be confused as to the source
of these goods and services. In particular, applicant
argues that the sophisticated purchasers to whom its
services are directed would not be confused between the
source of origin of an electronic gaming machine, which is
exposed to and entices customers to play one shot machine
in favor of another; and applicant’s programming services,
which are relied on to track player activity. Applicant
points out that a casino owner or manager may well buy
hundreds of slot machines, but only one system for which
programming services and support are required. Further,
applicant maintains that the prospective purchasers of its
services are exposed to demonstrations of the services in
the intended casino environment. Finally, applicant notes
that there have been no instances of actual confusion
involving registrant’s mark OASIS for electronic gaming
machines and applicant’s mark for its services.
Ser No. 74/622,053
6
While we have carefully considered applicant’s
arguments, we nonetheless agree with the Examining Attorney
that use of applicant’s mark OASIS for its computer
programming services in a gaming environment is likely to
cause confusion with registrant’s identical mark OASIS for
electronic gaming machines. As noted by the Examining
Attorney, it is clear from the record that applicant’s
services are designed to track player activity at gaming
machines. Thus, these services are of a type which may be
used in connection with registrant’s electronic gaming
machines. Indeed, electronic gaming machines and services
designed to monitor such machines are complementary
products and services. Moreover, applicant has
acknowledged that common purchasers may be exposed to both
marks. While individuals who acquire equipment and
services for casinos would be expected to exercise a
certain degree of care in purchasing such products and
services, we believe even those individuals may be confused
when such closely related goods and services as electronic
gaming machines and computer programming services in for
use in tracking player activity at gaming machines are
offered under the identical mark. Such individuals may
well assume that registrant’s electronic gaming machines
and applicant’s computer programming services which are
Ser No. 74/622,053
7
used to track player activity at gaming machines are
designed to be part of a single system, or are otherwise
produced by the same entity. In any event, we believe that
these goods and services are so closely related that, when
offered under the identical mark, confusion is likely.
Whether Specimens Are Evidence of Service Mark Use
Applicant submitted as specimens three copies of a
brochure, the front and an inside page of which are
reproduced below.
Ser No. 74/622,053
8
According to the Examining Attorney, the specimens are
“merely advertisements for goods” and do not show use of
the mark OASIS in connection with computer programming
services.
We disagree. It is clear from the specimen brochure
that applicant offers a comprehensive slot accounting,
player marketing and analysis system. Such a system
involves programming services because, as indicated on the
brochure, it is customized to meet the needs of the
individual casino. It is not necessary that applicant
spell out in the brochure that it offers computer
programming services. Under the circumstances, we find
that the specimens are acceptable evidence of service mark
use.
Ser No. 74/622,053
9
Decision: The refusals to register under Section 2(d)
of the Trademark Act are affirmed; the refusal to register
on the basis of the specimens is reversed.
G. D. Hohein
P. T. Hairston
C. E. Walters
Administrative Trademark
Judges, Trademark Trial and
Appeal Board
Ser No. 74/622,053
10