BULKY DOCUMENTS
`(exceeds 300 pages)
`
`Proceeding] Serial No: 91 162078
`
`Filed: O3-27-2006
`
`Title: Trial Brief; Notice of Filing; Depositions
`and Deposition Exhibits; and Index to Notice of
`Reliance Documents
`
`Part
`
`1 of 10
`
`

`
`“M
`
`ATTORNEYS
`
`TTAB
`
`Lynda E. Roesch
`513-977-8139
`
`lynda.roesch@dins|aw.com
`
`March 13, 2006
`
`via FIRST-CLASS MAIL
`
`Box 1TAB NO FEE
`
`Commissioner for Trademarks
`
`2900 Crystal Drive
`Arlington, VA 22202-3513
`
`Re:
`
`The United States Playing Card Company v. Harbro LLC
`Opposition No.: 91162078
`Serial No.: 78/253,725
`
`Dear Honorable Sir:
`
`Enclosed are the Opposer's Trial Brief and Notice of Filing which were filed
`electronically today. As stated in the Notice, the attachments are included in this First
`Class mailing.
`
`Kindly acknowledge receipt of the enclosures by stamping and returning the
`enclosed postcard.
`
`Very truly yours,
`
` Roesch
`
`LER:kw
`
`Enclosure
`
`cc:
`
`Timothy A. Flory, Esq.
`
`1 246702v1
`
`8394-59
`
`lllllllllllllllllllllllllllllllllllllllllllllllll
`
`03-27-2006
`
`u.s. Pavent a. TM01'clTM Mail Rcpt 0x. #35
`
`255 East Fifth Street, Suite 1900 Cincinnati, OH 45202
`513.977.8200 513.977.8141 fax www.dinslaw.com
`
`
`
`

`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`
`THE UNITED STATES PLAYING
`
`CARD COMPANY,
`
`Opposer,
`
`v.
`
`HARBRO, LLC,
`
`Opposition No.: 91162078
`
`Applicant.
`
`
`OPPOSER'S TRIAL BRIEF
`
`March 13, 2006
`
`Lynda E. Roesch
`(lynda.roesch@dinslaw.com)
`Kathryn K. Przywara
`(kathryn.przywara@dinslaw.com)
`Steven A. Abreu
`(steven.abreu@dins|aw.com)
`DINSMORE & SHOHL LLP
`
`1900 Chemed Center
`
`255 East Fifth Street
`
`Cincinnati, Ohio 45202
`(513) 977-8139-direct
`(513) 977-8141-fax
`
`Attorney for Opposer
`The United States Playing Card Company
`
`

`
`45
`
`I.
`
`ll.
`
`Table of Contents
`
`Preliminary Statement. ............................................................................ .. 1
`
`Procedural History .................................................................................. .. 2
`
`III. Evidence Relied Upon ............................................................................. .. 3
`
`A. Opposer's Direct Evidence ............................................................ .. 3
`
`B. Applicant's Evidence ..................................................................... .. 4
`
`C. Opposer's Rebuttal Evidence ........................................................ .. 5
`
`IV. Statement of the Facts ............................................................................ .. 7
`
`ARGUMENT ...................................................................................................... .. 9
`
`A.
`
`VEGAS is short for "Las Vegas," one of the best known
`geographic locations in the United States ................................... .. 11
`
`1.
`
`2.
`
`3.
`
`4.
`
`The Geographic Significance of VEGAS is illustrated by
`a Dictionary Entry ................................................................. .. 11
`
`The Geographic Significance of VEGAS is illustrated by
`Widespread Use of the Word to refer to the city of Las
`Vegas, Nevada ...................................................................... .. 12
`
`The Las Vegas Visitors Bureau advertised and used
`"Vegas" alone to identify the city ........................................ .. 13
`
`According to the Ovewvhelming Evidence presented to
`this Board, the Primary Significance of VEGAS is that of
`a Geographic Location ......................................................... .. 14
`
`B.
`
`Consumers are likely to believe that Vegas is the origin of
`Applicant's playing cards because of a well known
`association between the goods and the geographic location
`
`15
`
`C. Applicant's misrepresentation that its playing cards are
`associated with "Vegas" would materially affect the public's
`decision to purchase the goods ................................................... .. 21
`
`V.
`
`CONCLUSION .......................................................................................... .. 24
`
`

`
`.45
`
`Table of Authorities
`
`CASES
`
`Don a Ltd. v. Don a Michi an Co., Cancellation No. 92033012
`(TTAB Sept. 6, 2005) ................................................................................... .. 23
`
`Federal Glass Co. v. Corning Glass Works,
`162 U.S.P.Q. 279 (TTAB 1969) .................................................................... .. 7
`
`In re House of Windsor lnc., 221 U.S.P.Q. 53 (TTAB 1983) .................... .. 23
`
`In re American International Group, lnc.,
`Serial No. 75/278430 (TTAB June 25, 2002) .............................................. .. 12
`
` , 48 U.S.P.Q. 2d 1031 (TTAB 1998) ..................... .. 15
`
`In re BJIP, lnc., Serial No. 75/529080 (TTAB July 18, 2001) ..................... .. 14
`
`In re Bristol-Myers Sguibb Co., Serial No. 78/222332
`(TTAB July 15, 2005)................................................................................... .. 12,14,18
`
`In re Broyhill Furniture Industries lnc.,
`60 U.S.P.Q. 2d 1511 (TTAB 2001) .............................................................. .. 5,11,19,20
`
`In re California Innovations, lnc.,
`66 U.S.P.Q.2d 1853 (Fed. Cir. 2003) ........................................................... .. 2,5,9,15,21,23,24
`
`In re Consolidated Specialty Restaurants,
`71 U.S.P.Q.2d 1921 (TTAB 2004) ............................................................... .. 21
`
`In re Cotchett, Serial No. 78/280591 (TTAB August 5, 2005) ................... .. 12
`
`In re Cotter & Co., 228 U.S.P.Q. 202 (TTAB 1985) .................................... .. 11
`
`In re Fashion Groug, Serial No. 76/006037
`(TTAB Dec. 3, 2004) .................................................................................... .. 13,18
`
`In re Hiromichi Wada, 52 U.S.P.Q.2d 1539,
`194 F.3d 1297 (Fed. Cir. 1999) .................................................................... .. 16,23
`
`In re Loew's Theatres, 226 U.S.P.Q. 865,
`769 F.2d 764 (Fed. Cir. 1985) ...................................................................... .. 23
`
`In re Nett Designs lnc., 57 U.S.P.Q.2d 1564,
`1566, 236 F.3d 1339 (Fed. Cir. 2001) .......................................................... .. 5
`
`

`
`In re Opryland USA Inc., 1 U.S.P.Q.2d 1409
`(TTAB 1986) ................................................................................................. .. 15
`
`
`In re Save Venice New York Inc., 59 U.S.P.Q. 2d
`1778, 259 F.3d 1346 (Fed. Cir. 2001) .......................................................... .. 18,20
`
`McCutchin v. DuBel|, Opposition No. 91156821
`(TTAB July 27, 2005) ................................................................................... .. 14
`
`Mid City Bowling Lanes & Sgorts Palace Inc.
`v. Don Carter's All Star Lanes-Sunrise Ltd.,
`1998 U.S.Dist. LEXIS 3297 (E.D. La. Mar. 12,1998) ................................... .. 6
`
`Racciogpi v. Agogee, Inc., 47 U.S.P.Q.2d 1368 (TTAB 1998) .................. .. 6
`
`15 U.S.C. § 1052 ............................................................................... .. 1,2,24
`
`STATUTES
`
`MISCELLANEOUS
`
`J. Thomas McCarthy, McCarthy on Trademarks and
`Unfair Comgetition §20:11 (4 ed. 2005) ........................................ ..
`
`J. Thomas McCarthy, McCarth on Trademarks and
`Unfair Comgetition §20:117 (4 ed. 2005) ...................................... ..
`
`7
`
`6
`
`

`
`I.
`
`Preliminagy Statement
`
`Harbro, LLC, ("Harbro") applied at the U.S. Patent and Trademark Office to register
`
`the mark VEGAS, in International Class 28 for "playing cards." The United States Playing
`
`Card Company ("USPC"), a well known manufacturer of playing cards, believes it will be
`
`damaged by Harbro's registration of the VEGAS mark. Therefore, USPC filed a petition to
`
`oppose the mark based on the fact that the mark is deceptive under Section 2(a) of the
`
`Trademark Act or primarily geographically misdescriptive or descriptive within the meaning
`
`of Section 2(e). 15 U.S.C. §1052.
`
`Vegas is the "literal equivalent" of the well known tourist destination Las Vegas,
`
`Nevada. Hundreds of news stories in 2005 demonstrate that the public knows Las Vegas,
`
`Nevada, as both its full name "Las Vegas" as well as its shorter version "Vegas." Vegas is
`
`home to several we||—known casinos including the MGM Grand, the Bellagio, the Luxor, the
`
`Venetian, Binion's Horseshoe, Mandalay Bay, the Rio, the Flamingo and many others.
`
`USPC sells playing cards to these casinos for use at their card tables. Las Vegas is
`
`famous for gambling and legally sanctioned games of chance, often using playing cards,
`
`such as Blackjack, Baccarat, Pai Gow Poker, Let it Ride, and others. The city also serves
`
`as the host of many world—famous poker tournaments including the World Series of Poker
`
`and the World Poker Tour's annual championship. Because card playing is prevalent
`
`throughout Las Vegas and is one of the reasons tourists visit Las Vegas, the city is
`
`associated with card games like poker and playing cards themselves. Additionally, playing
`
`cards themselves are associated with Las Vegas. USPC maintains a warehouse in Las
`
`Vegas, and the U.S. operations of a major playing card manufacturer, Gaming Players
`
`International (GPI), is headquartered in Las Vegas. There is also a market in retail stores
`
`

`
`and on the internet for cancelled cards from Las Vegas casinos. Thus, playing cards are
`
`intimately associated with Las Vegas.
`
`Applicant's VEGAS mark is not registerable because the mark is primarily
`
`geographically misdescriptive. First, Vegas is a well known geographical destination.
`
`Second, Las Vegas is associated with playing cards. Finally, the association of a deck of
`
`cards with Las Vegas is a material factor in a consumer's purchasing decision. Applicant's
`
`cards are not produced in Vegas nor are they used in Vegas casinos, though a consumer
`
`purchasing the cards might
`
`think otherwise. Thus, Harbro's mark misdescribes its
`
`geographic origin in a way that violates this Board's three part test for geographic
`
`misdescriptiveness enumerated in In re California Innovations, |nc., 66 U.S.P.Q.2d 1853,
`
`1857 (Fed. Cir. 2003).
`
`The mark VEGAS as applied to Playing Cards is deceptive and primarily
`
`geographically misdescriptive, or primarily geographically descriptive. Therefore, the Board
`
`should sustain the opposition and refuse registration of the mark.
`
`ll.
`
`Procedural Histor_'y
`
`Harbro, LLC, filed an application to register Vegas for playing cards on May 23,
`
`2003, in Class 28 on the Principal Register. The mark was approved for publication on July
`
`21, 2004, and was published in the Official Gazette on August 10, 2004.
`
`USPC filed an opposition to Harbro's VEGAS application on September 9, 2004.
`
`Opposer asserted as grounds (1) the mark was deceptive under 15 U.S.C. § 1052(a); (2) or
`
`the mark was primarily geographically descriptive or misdescriptive under 15 U.S.C. §
`
`1052(e). Harbro answered the Notice of Opposition on October 29, 2004. Both parties
`
`engaged in discovery thereafter.
`
`

`
`Opposer, USPC, took trial testimony between July 1, 2005 and July 31, 2005.
`
`Harbro's trial testimony occurred between October 28, 2005 and November 28, 2005.
`
`Between December 29, 2005 and January 12, 2006, USPC offered rebuttal evidence and
`
`testimony. Opposer submits a Notice of Filing concurrently with its Brief outlining each
`
`submission by Opposer to the Board. Depositions and exhibits are submitted to the Board
`
`and applicant via U.S. Mail, First Class, due to the large volume of documents submitted.
`
`Ill.
`
`Evidence Relied Upon
`
`A.
`
`Opposer's Direct Evidence
`
`Opposer relies upon the trial testimony of the following witnesses:
`
`1.
`
`Kevin Bagger, Las Vegas Convention and Visitor's Authority. Mr. Bagger is
`
`the director of internet marketing and research for the Las Vegas Convention and Visitor's
`
`Authority (LVCVA).
`
`(Bagger at 5). LVCVA is the official marketing organization for Las
`
`Vegas and the surrounding communities. (Bagger at 5-6).
`
`In his capacity as director of
`
`internet marketing, Bagger oversees all web marketing efforts of LVCVA. As an employee
`
`with eight-years experience, Bagger is familiar with the efforts the Authority makes to
`
`promote travel and tourism to Las Vegas. (Bagger at 5-8).
`
`2.
`
`Dan Espenscheid, United States Playing Card. Mr. Espenscheid is the Casino
`
`Sales Managerfor USPC. (Espenscheid at 5). As Casino Sales Manager, Espenscheid
`
`is responsible for USPC contracts supplying playing cards to approximately 85 percent of
`
`the casinos in Las Vegas. Espenscheid also manages and supervises USPC's Las Vegas
`
`warehouse that stores the playing cards for distribution to Las Vegas casinos.
`
`(Espenscheid at 7). Mr. Espenscheid is also familiar with how playing cards are used in the
`
`casinos of Las Vegas, (Espenscheid at 12.) and the growth of popularity of poker in Las
`
`

`
`Vegas. (Espenscheid at 20). Mr. Espenscheid also testified about the sale and market for
`
`used casino cards sold in Vegas gift shops. (Espenscheid at 26).
`
`Opposer also relies upon the following Notice of Reliance filed under Rule 2.122(e):
`
`USPC filed a Notice of Reliance on July 29,2005 with references to over 630 articles
`
`from printed publications from newspapers and magazines available to the public. The
`
`Notice of Reliance also includes references to entries in Merriam-Webster's Geographical
`
`Dictionary, MSN-Encarta and American Heritage Illustrated Encyclopedic Dictionary and
`
`television transcripts. Evidence in this Notice of Reliance proves that Vegas refers to Las
`
`Vegas, Nevada, which is a well known geographical location, and perhaps the most
`
`popular tourist destination in the United States, that an association exists between Vegas
`
`and playing cards, and that a material factor in a consumer's purchasing decision is the
`
`association between Vegas and playing cards.
`
`B.
`
`Applicant's Evidence
`
`Applicant relied upon the testimony of a single witness and four U.S. trademark
`
`registrations attached to it's Notice of Reliance.
`
`Applicant's witness:
`
`Karl T. Ondersma, Attorney - VanDyke, Gardner, Linn & Burkhart, Applicant's
`
`sole witness, is a an associate with the law firm of VanDyke, Gardner, Linn & Burkhart.
`
`(Ondersma at 4). Mr. Ondersma testified that he purchased Las Vegas themed playing
`
`cards at a store in Detroit. Testimony from Mr. Ondersma and Exhibit G to his
`
`deposition demonstrate the availability of cancelled casino cards used in Las Vegas
`
`casinos to purchasers on the internet.
`
`

`
` I
`
`Applicant's Notice of Reliance filed on November 28, 2005 consists of four U.S.
`
`trademark registrations (172,312 registered in 1923; 401,715 registered in 1943; 726,940
`
`registered in 1962 and 1,189,273 registered in 1982), all granted well prior to the
`
`enactment of NAFTA, the North American Free Trade Agreement, and the amended
`
`Lanham Act. Because these registrations were granted when there was a different
`
`standard governing primarily geographically misdescriptive marks, they are not relevant to
`
`this proceeding. See, In re California Innovations lnc., 66 U.S.P.Q.2d 1853, 1857 (Fed. Cir.
`
`2003) (Because NAFTA and the amended Lanham Act place an emphasis on actually
`
`misleading the public, the PTO may not deny registration now without a showing that the
`
`goods-place association made by the consumer is material to the consumer's decision to
`
`purchase the goods.).
`
`Additionally, third-party registrations are not evidence that the marks were in use and
`
`that the relevant purchasing public is familiar with them.
`
`In re Broyhill Furniture Industries
`
`lri, 60 U.S.P.Q.2d 1511 (TTAB 2001) (rejecting argument that third-party registrations
`
`were evidence that it was customary in the furniture industry to use geographic names as
`
`trademarks for furniture and that these locations were strongly associated with a particular
`
`style or motif). Further, the PTO's allowance of other registrations with characteristics
`
`similar to Applicant's does not bind the Board to act similarly in this case. @§
`
`1%, 57 U.S.P.Q.2d 1564, 1566, 236 F.3d 1339 (Fed. Cir. 2001).
`
`C.
`
`Opposer's Rebuttal Evidence
`
`To rebut Applicant's argument that the term VEGAS is not primarily geographic and
`
`to rebut Applicant's argument that playing cards are not associated with Las Vegas
`
`

`
`‘kl
`
`because playing cards may be manufactured and purchased in other geographic locations,
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`Opposer produced rebuttal evidence which showed that,
`
`indeed, Vegas is primarily
`
`geographic and playing cards are associated with Vegas and that fact is material to the
`
`purchaser of playing cards.‘
`
`Q
`
`1.
`
`Joseph A. Robinette, United States Playing Card Company. Mr. Robinette is
`
`the General Counsel of USPC.
`
`(Robinette at 4). As General Counsel, Mr. Robinette
`
`coordinates administrative matters, such as trademark filings; he also reviews and drafts
`
`USPC's contracts. Further, Mr. Robinette prosecutes and defends all the litigation in which
`
`USPC is involved. (Robinette at 5). USPC approved an advertisement for a promotion run
`
`by the Kroger Company for the World Poker Tour, which Mr. Robinette reviewed. (Id. at 7).
`
`The promotion featured the word "Vegas," contained the front of several playing cards and
`
`indicated that the winner of the contest would "Win a Trip to Vegas." (Robinette Dep.
`
`Exhibit 2). The reference to "Vegas" was clearly a geographic location and playing cards
`
`are clearly associated with Vegas in the advertisement.
`
`2.
`
`Kathryn K. Przywara, Attorney - Dinsmore & Shohl, LLP. Ms. Przywara is an
`
`Attorney with the law firm of Dinsmore & Shohl LLP.
`
`(Przywara at 4). Ms. Przywara
`
`testified regarding print outs of webpages she visited. 2 These web pages include the
`
`Gamblers General Store and O|dVegasChips.com, sites which advertise and sell cancelled
`
`
`
`1 According to McCarthy, "plaintiff in its rebuttal case may introduce facts and witnesses appropriate to
`deny, explain or otherwise discredit the facts and witnesses of opponent..."
`J. Thomas McCarthy,
`McCarthy on Trademarks and Unfair Competition §2o:117 (4‘“ ed. 2005).
`2 Print-outs of articles downloaded from the internet are admissible where they are introduced with the
`testimony of the person who accessed the information on the internet. , 47
`U.S.P.Q.2d 1368 (TTAB 1998). Additionally, web site advertisements are admissible as evidence of the
`purchasing public‘s perception. Mid City Bowling Lanes & Sports Palace Inc. v. Don Carter's All Star
`Lanes-Sunrise Ltd., 1998 U.S.Dist. LEXIS 3297 (E.D. La. Mar. 12, 1998) (Exhibit A).
`
`6
`
`

`
`\»
`
`cards from Las Vegas casinos.
`
`(Id. at 6 and Przywara Dep. Exhibits 6, 7 and 8). Ms.
`
`Przywara also testified that she purchased a charm bracelet with a playing card charm and
`
`a key tag containing black jack playing cards from the Las Vegas Centennial website.
`
`(Przywara at 8 and Przywara Dep. Exhibits 4 and 5). The evidence demonstrates that
`
`playing cards are associated with Vegas, and the association is a material factor in a
`
`consumer's purchasing decision.
`
`Opposer also relies upon the following Notice of Reliance filed under Rule 2.122(e):
`
`On January 12, 2006 Opposer filed a second Notice of Reliance, including printed
`
`publications, such as articles appearing in newspapers and magazines available to the
`
`public. The articles cited rebut Applicant's argument that the there is no association
`
`between Vegas and playing cards and that consumers will not be deceived. The articles
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`also show that the association is a material factor in the purchase decision.
`
`IV.
`
`Statement of the Facts
`
`The United States Playing Card Company is a manufacturer and distributor of
`
`playing cards.3 (Espenscheid at 6). Harbro is a manufacturer and distributor of products
`
`including playing cards. Both companies own U.S. Trademark Registrations for goods
`
`including "playing cards" in International Class 28.
`
`On May 23, 2003, Harbro LLC, applied to registerthe mark VEGAS on the Primary
`
`Register. The Application was assigned Serial Number 78/253725. On July 21, 2004, the
`
`mark was approved for publication in the Official Gazette, and it appeared in the Gazette on
`
`3 A competitor of the applicant has standing to oppose applicant's right of registration. fle_cl;¢a|_C5|as_s
`Co. v. Corning Glass Works, 162 U.S.P.Q. 279, 282-83 (TTAB 1969); J. Thomas McCarthy, McCarth on
`Trademarks and Unfair Competition §2o:11 (4"‘ ed. 2005).
`
`
`
`

`
`August 10, 2004. The United States Playing Card Company filed a Notice of Opposition
`
`on September 9, 2004.
`
`Las Vegas, Nevada, is one of America's premier tourist destinations. (Bagger at 7)
`
`(Notice of Reliance Index 2, hereinafter "lndex"). Las Vegas bills itself as "the entertainment
`
`capital of the world," where visitors can not only view live entertainment in casino
`
`showrooms, but also enjoy golf, fine dining, relax in a spa or spend time in a casino.
`
`(Bagger at 7-8). Las Vegas is known for its gaming, which includes legal games of chance
`
`like slot machines, blackjack, craps and roulette.
`
`(Id. at 9). These games frequently
`
`involve the use of playing cards. (Id. at 10).
`
`Las Vegas has a visitors’ bureau called the Las Vegas Convention and Visitors‘
`
`Authority (LVCVA). (Id. at 5). This entity spends around 75 to 80 million dollars annually
`
`on its advertising budget. (Id. at 10). One of LVCVA's current marketing strategies includes
`
`use of the logo "Only Vegas."
`
`The logo "Only Vegas" appears on the promotional
`
`brochures sent to potential visitors of Las Vegas.
`
`(Id. at 17, Bagger Dep. Exhibits 27 and
`
`28). The official tourism agency also promotes its city by using the tagline "What Happens
`
`in Vegas Stays in Vegas." (Bagger at 17).
`
`There are many well-known large casinos in Las Vegas, Nevada. (Espenscheid at
`
`11). The casinos need a replenishable supply of playing cards in order to conduct games
`
`of chance such as black jack.
`
`(Id. at 12). USPC and other card companies including
`
`Gemaco and GP! supply playing cards to the casinos.
`
`(Espenscheid at 13. See also,
`
`Przywara Dep. Exhibit 2). For security reasons, once the casinos use the cards, they are
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`''cancelled'' by a process which marks the deck. Such markings include a cut corner or
`
`small hole drilled through the card so the cards cannot be reused without detection.
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`

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`(Espenscheid at 13). Despite the markings on the cards there is a large market for sale of
`
`the marked cards because they have been used at a casino as demonstrated through the
`
`existence of a multitude of websites where the cards may be purchased. (See Ondersma
`
`Dep. Exhibit6, Espenscheid Dep. Exhibits 10, 12, 13, 14, 15; Przywara Dep. Exhibits 6, 7,
`
`8).
`
`Consumers are able to buy the cancelled cards that were once in play at a casino as
`
`a souvenir or as a novelty item. (Espenscheid at 13; Bagger at 20; Index 631). As noted,
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`websites also exist which feature the sale of cancelled playing cards. (Przywara at 11-16
`
`and Przywara Dep. Exhibit 6, 7, 8).Cance|led cards may also be purchased in casino gift
`
`shops and stores like the Gambler's General Store in Las Vegas, Nevada. (Przywara at 11-
`
`16 and Przywara Dep. Exhibit 6; Espenscheid at 38-39).
`
`ARGUMENT
`
`United States Playing Card has offered considerable evidence that satisfies the
`
`three prong test to determine whether a mark is primarily geographically deceptively
`
`misdescriptive. In re California Innovations Inc., 66 U.S.P.Q.2d 1853 (Fed. Cir. 2003). The
`
`test, which was necessary due to changes in U.S. trademark law after the enactment of
`
`NAFTA, the North American Free Trade Agreement, provides that a trademark may not be
`
`federally registered if:
`
`(1) the primary significance of the mark is a generally known geographic
`location, (2) the consuming public is likely to believe the place identified by
`the mark indicates the origin of the goods bearing the mark, when in fact the
`goods do not come from that place, and (3) the misrepresentation was a
`material factor in the consumer's decision.
`
`l_d. at 1858.
`
`USPC has offered overwhelming evidence proving that the primary significance of
`
`Vegas is a generally known geographic location: Las Vegas, Nevada. The Convention and
`
`9
`
`

`
`Visitor's Bureau of Las Vegas, Nevada uses the term Vegas to refer to their city. The
`
`Merriam Webster Geographic Dictionary lists as its entry for Vegas a reference to the city of
`
`Las Vegas, Nevada. Hundreds of articles from periodicals use Vegas in a way that refers
`
`to the specific location of Las Vegas, Nevada. There is no escaping the fact that the
`
`primary significance of the mark VEGAS is that of a generally known geographic location.
`
`Further, the consuming public is likely to believe that playing cards come from Vegas
`
`because of a strong goods-place association between playing cards and the city. Las
`
`Vegas is home to some of the nation's largest and most popular casinos. These casinos
`
`use playing cards in their games of chance. Additionally, the championships of the World
`
`Poker Tour and the World Series of Poker are held annually in Las Vegas and broadcast
`
`from Las Vegas on television throughout the country. (Espenscheid at 19-21; Index at 15,
`
`624). Because the relevant public is likely to associate playing cards with gambling, and
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`gambling with Las Vegas, the goods-place association is strong. Therefore, the purchasing
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`public is likely to believe that the playing cards identified by a mark VEGAS are likely to be
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`from Las Vegas.
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`Finally, the misrepresentation of applicant's goods as being from Vegas is likely to
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`be material to the purchaser's decision. When a goods-place association is strong, the
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`board may presume that a consumer will want goods from the geographical region known
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`for the product. Moreover, the strong market and demand for cancelled casino cards
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`demonstrates that the geographical location of where a playing card is from or used affect
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`the consumer's purchasing decision.
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`For these reasons VEGAS is primarily geographically deceptively misdescriptive and
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`should not be registered.
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`10
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`

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`A. VEGAS is short for "Las Vegas," one of the best known geographic locations
`in the United States.
`
`The evidence supporting the first element, the primary significance of the mark is a
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`generally known geographic location, consists of dictionary definitions, over 620
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`publications which refer to Vegas as a geographic location, and testimony by the Las
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`Vegas Visitor's Bureau which uses VEGAS in advertisements to refer to its city. The scant
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`evidence submitted by Applicant does nothing to contradict the fact that VEGAS is short for
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`"Las Vegas" and refers to a well known, even perhaps one of the best known, geographic
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`locations in the United States.
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`1.
`
`The Geographic Significance of VEGAS is illustrated by a Dictionary
`Entg
`
`The Third Edition of Merriam-Webster's Geographical Dictionary lists an entry for
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`Vegas: "See Las Vegas 1." Las Vegas is defined as:
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`"1. often shortened to Vegas. City of Clark Co., SE corner of Nevada, 22 miles NW
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`of Boulder Dam; pop.(1990c) 258,295; alt. 2030 ft.; distribution centerfor mining and
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`stock-raising region; major tourist resort featuring legalizes gaming and glitzy
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`hotels..."
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`Both the entry for Vegas and Las Vegas demonstrate that the terms are synonymous and
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`refer to the largest city in Nevada.
`
`The Board routinely relies on dictionary definitions as evidence of geographic
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`significance. See,e.g.,
`
`In re Cotter & Co., 228 U.S.P.Q. 202, 204 (TTAB 1985); |_n_r§
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`Broyhill Furniture Industries |nc., 60 U.S.P.Q.2d 1511 (TTAB 2001) (Relying on Cassel’s
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`Italian Dictionary and Merriam-Webster's Geographical Dictionary, the Board found the
`
`11
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`term "Toscana" (or "Tuscany," in English) designated a region in Italy and had no other
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`meaning.)4
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`The dictionary definition here confirms that Vegas is synonymous with Las Vegas: a
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`generally known geographic location.
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`2.
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`The Geo ra hic Si nificance of VEGAS is illustrated b Wides read
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`Use of the Word to refer to the ci
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`of Las Ve as Nevada
`
`Opposer, USPC, also submits numerous newspaper and magazine articles as well
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`as television transcripts which illustrate how Vegas is commonly used to refer to the city of
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`Las Vegas, Nevada. , as shown in Index Numbers 5 and 6, refers to
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`Vegas as a geographical place twice in the same June 3, 2005, edition: first as the location
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`of events of the movie _G_Q, directed by Doug Liman, and then as the location of Angelina
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`Jolie's wedding to Billy Bob Thornton. "Vegas" was used in the same six-day period in
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`May, from the 26”‘ through the 315‘, to refer to the geographic location of Las Vegas,
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`Nevada, by the following well known and widely circulated publications: The Associated
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`Press (Index 17), Baltimore Sun (Index 26), Fortune Magazine (Index 28), Philadelphia
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`lnquirer(|ndex 33, 61, 73), Chicago Tribune (Index 36), Detroit Free Press (Index 37), San
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`Francisco Chronicle (Index 44), Washington Post (Index 50, 91), Sacramento Bee (Index
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`63), Orlando Sentinel (Index 87), and even the Las Vegas Review-Journal (Index 82, 83).
`
`The 641 publications that comprise the Opposer's Notice of Reliance are referred to herein
`
`
`4 The Board has also relied on dictionaries in recent decisions which were marked as NOT CITABLE
`AS PRECEDENT OF THE TTAB. Opposer references the following decisions as illustrative: In re Cotchett,
`Serial No. 78/280591 (TTAB August 5, 2005) (Exhibit B) ( Board relied heavily on definitions for"Half Moon
`Bay" contained in the Columbia Gazetteer of North America and Merriam-Webster's Geographical
`Dictionary); In re Bristol-Myers Sguibb Co., Serial No. 78/222332 (TTAB July 15, 2005) (Exhibit C) (Board
`relied on the American Heritage Dictionary of English Language definition of "Princeton" as a borough in
`New Jersey and the seat of Princeton University and held that the reference to location of or seat of
`Princeton University enhanced the term's geographic significance.); In re American International Group,
`LE, Serial No. 75/278430 (TTAB June 25, 2002) (Exhibit D) (Board relied, in part, on Examining Attorney's
`submission of the dictionary definition of "New Hampshire" which referred to its nickname as the "Granite
`State," as evidence that it was a geographic location.)
`
`12
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`by lndex numbers; the articles are reproduced in their entirety and listed by Index number
`
`in the Notice of Filing.
`
`Articles reproduced from NEXIS,
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`like the ones submitted by USPC, operate as
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`evidence of a mark's primary significance as a generally known geographic location. The
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`Board has relied on such evidence in the following unreported case, not citable as
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`precedent. See, e.g., In re Fashion Group, Serial No. 76/006037 (TTAB Dec. 3, 2004)
`
`(Exhibit E) (Board found mark's primary significance as a generally known geographic
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`location based upon dozens of NEXIS article excerpts that showed "NoLita" to be a
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`particular place and a term derived from the phrase "North Little ltaly" or "North of Little
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`|ta|y.").
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`The Lexis and Westlaw articles submitted in this case show widespread use of the
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`term Vegas to refer to the geographic location of Las Vegas, Nevada. Therefore, the
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`primary significance of VEGAS is that of a geographic location.
`
`3.
`
`The Las Vegas Convention and Visitors‘ Authority advertised and
`used "Vegas" alone to identify the city
`
`Kevin Bagger, Director of Research of the Las Vegas Convention and Visitors‘
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`Authority (LVCVA) testified to the significance of Vegas as a geographic location. The
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`LVCVA uses the marks "Only VEGAS" and "Whatever happens in Vegas, stays in Vegas"
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`to promote tourism in the city of Las Vegas. (Bagger at 10). The LVCVA sends tourist
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`information with the "Only VEGAS" design featured prominently on the cover.
`
`(Bagger
`
`Dep. Exhibits 27, 28).
`
`The LVCVA has an annual advertising budget of 75 to 80 million dollars. (Bagger at
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`10). Expenditures on behalf of the City which refer to the location as "Only VEGAS" reach
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`across the country. Thus, it is only natural that the City of Las Vegas has two names:
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`13
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`Vegas and Las Vegas, due in some respects to the efforts of the LVCVA to promote the
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`shorter catchier "Vegas" as synonymous with the geographic area.
`
`Mr. Bagger, a long-time resident of Las Vegas, Nevada, testified that through
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`endless tourism promotion, the city is known by two names:
`
`Q:
`A:
`
`Q:
`A:
`
`Other than Las Vegas is there -- is the city known by any other term?
`l/Vell, we -- in'our marketing campaign one of the current logos we use is
`Only Vegas.’ That ties in to our "What happens in Vegas stays here"
`advertising campaign, but it's also known as Vegas as well as Las Vegas.
`And how do you know that?
`Personal experience,
`living in Las Vegas for 35 years, traveling, media
`accounts.
`
`(Bagger at 10.)
`
`Thus, the evidence demonstrates the primary significance of Vegas is that of a
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`geographical location.
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`4.
`
`According to the Overwhelming Evidence presented to this Board,
`the Primary Significance of VEGAS is that of a Geographic Location
`
`Applicant has not produced evidence to contradict the primary sig