BINION is primarily merely a surname, says TTAB

United States of America
In In re Binion (Cases 76590702 and 76590729, December 23 2009), the Trademark Trial and Appeal Board (TTAB) has affirmed refusals to register the marks BINION and BINION'S. 

The applicant, Jack B Binion, filed two intent-to-use applications to register the marks BINION and BINION’S for “casino and gaming services” and “hotel and bar services”. The trademark examining attorney refused both applications, holding that:
  • there was a likelihood of confusion under Section 2(d) of the Lanham Act with the earlier registered trademark BINION'S ROADHOUSE for "restaurant services";
  • the applicant's marks were primarily merely a surname under Section 2(e)(4) of the act; and
  • in the event that the surname holding was affirmed on appeal, the applicant's evidence of acquired distinctiveness under Section 2(f) of the act was insufficient to establish registrability on the Principal Register.  
The applicant appealed to the TTAB.
Before the TTAB, the applicant argued that he owned three other federal registrations for marks comprising the words 'Jack Binion' or 'Jack Binion's' for “restaurant services,” and that these registrations issued over the BINION'S ROADHOUSE registration. He further argued that these three registrations had peacefully coexisted with the cited registration for years. The trademark examining attorney countered that:

  • the three earlier marks were distinguishable;
  • the cited mark and the marks applied for were similar; and
  • the services were related.  
The TTAB held that one feature of a mark may be more significant than another, and that it is not improper to give more weight to this dominant feature. Applying the DuPont factors, it found that the marks were similar in sound, appearance and meaning, and that they engendered very similar overall commercial impressions.
The applicant’s original recitation of services included “restaurant services”, but in response to the Section 2(d) refusal, the applicant deleted "restaurant services" to have the refusal withdrawn. However, the TTAB found that the applicant’s and the registrant’s services were purchased by the same classes of consumers, who would employ nothing more than ordinary care in making their purchasing decisions about where to gamble, lodge, eat or drink. 
With regard to the three prior registrations owned by the applicant, the TTAB stated that the coexistence of the cited registration with those registrations for restaurant services did not compel a different result from that reached by the trademark examining attorney. To the extent that the applicant was making an equitable estoppel argument, the TTAB held that it was not well taken. Even if the prior registrations had some characteristics similar to the present applications, the US Patent and Trademark Office’s allowance of the prior registrations did not bind the TTAB. Therefore, the refusal to register both marks under Section 2(d) was affirmed.
On appeal, the trademark examining attorney maintained that BINION and BINION’S were primarily merely surnames, and that she had made a prima facie case shifting the burden of proof to the applicant to rebut her holding. She argued that the applicant had failed to support his argument that relevant consumers would regard Mr Binion as a “historical figure”. The applicant disputed her holding and pointed to the “renown” of the Binion name in the gaming industry, such as being in the Gambling Hall of Fame. He relied on references to 'Mr Binion' in the printed press and on the Internet as evidence that Binion was not primarily merely a surname.   
A term with surname significance may not be primarily merely a surname if that term also identifies a historical place or person. However, evidence that an individual is famous in a particular field does not necessarily establish that the person is a historical figure. Here, the TTAB found that the applicant's evidence of notoriety in the gambling industry was not so remarkable or so significant that he was a historical figure as contemplated by the case law. The refusal to register under Section 2(e)(4) was thus affirmed.
Acquired distinctiveness under Section 2(f) is limited by its terms to “a mark used by the applicant”. Such a claim is normally not filed in an intent-to-use application before the applicant files an amendment to allege use or a statement of use, because such a claim requires prior use. However, an intent-to-use applicant that has used the same mark on related goods or services may file a claim of acquired distinctiveness before filing an amendment to allege use or statement of use, if the applicant can establish that, as a result of its use of the mark on other goods or services, the mark has become distinctive of the goods or services covered by the intent-to-use application, and that this previously created distinctiveness will transfer to the goods and services in the intent-to-use application when use in commerce begins.
The trademark examining attorney argued - and the TTAB agreed - that almost all occurrences of 'Binion' in the evidence was as a full name (like Jack Binion or the Binion family), but not simply as the surname Binion. Both Jack Binion and Benny Binion are in the Gaming Hall of Fame, and numerous media articles refer to them by their full names. The TTAB found that this evidence was insufficient to show that BINION (or BINION’S) by itself was functioning as a trademark for related services. Therefore, the applicant could not claim proprietary rights based thereon for Section 2(f) purposes. This evidence did not establish that BINION and BINION’S, not yet used by the applicant as a mark, had acquired distinctiveness. The applicant’s ownership of the prior registrations did not establish acquired distinctiveness of the marks sought to be registered.  

Brian E Banner, Rothwell Figg Ernst & Manbeck PC, Washington DC

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