Trademark Law

The PTO Examining Attorney cited two grounds for refusing the register the marks ? likelihood of confusion over the existing registered mark BINION'S ROADHOUSE for ?restaurant services? and that the mark was primarily merely a surname (for which Binion?s evidence of acquired distinctiveness was lacking).

While a Section 2(f) claim of acquired distinctiveness can be made if the applicant?s use of the same mark in connection with other goods and services has made the mark distinctive of the goods or services in the intent-to-use applications and the acquired distinctiveness will transfer over to the goods and services in the intent-to-use application when use in commerce begins, the Board found that Binion?s existing registered marks for JACK BINION and JACK BINION'S were not the same.

The Board was also not persuaded by the evidence of the publicity of the Binion family as legends in the Las Vegas community (and let?s not forget the infamy as well from the Ted Binion murder trial) ? finding instead that it simply reinforced that consumers would recognize Binion as a surname and did not show use of the name as a trademark to an to an extent sufficient to show acquired distinctiveness

If Binion were inclined to appeal this decision, I think the case might be an excellent contender for an appeal by way of an independent district court civil action under 15 U.S.C. § 1071(b)(1) (rather than a traditional appeal to the Federal Circuit) in order to submit new evidence to overcome what might not have been enough evidence to convince the Board of acquired distinctiveness. And since such an action can be brought in the district where Binion resides (see 28 USC 1391(e)(3)), Binion could file the action in the District of Nevada. You think that might give Binion a home town advantage?

Of course, there is still the little issue of the likelihood of confusion rejection ? but that?s nothing that can?t be addressed with a consent and coexistence agreement with the owner of Binion?s Roadhouse (along with a little money).

But there is one other not-so-obvious nuance that stands in the way of Binion getting a federal registration on his name in connection with ?casino and gaming services? and ?hotel and bar services.? The BINION'S casino pictured at the top of this post is not actually owned by Binion, but rather its owned by TLC Casino Enterprises, which acquired the hotel/casino property in January 2008 from MTR Gaming who had purchased the property from Harrah?s in 2004 after Harrah?s bought out Binion?s Horseshoe and its intellectual property, keeping the ?Horseshoe? name and the ?World Series of Poker.? (For reasons discussed below, it?s not clear if Harrah?s also sold the ?Binion?s? name to MTR, which is what most reports state, or if Harrah?s still considers it part of its trademark portfolio and is licensing it.) A recent news story about the closing of the hotel at Binion?s provides some background. This link also provides some historical perspective.

However, Binion?s intent-to-use applications were filed with the PTO on May 6, 2004. Four months later in early September 2004, a Harrah?s subsidiary filed two use-in-commerce trademark registration applications for the mark BINIONS?S (word mark and design mark) for both ?Casino and gaming services? and ?Hotel, restaurant and bar services? citing a first use date of June 1964 (a reference back to the opening date of Binion?s Horseshoe). Both of these applications are suspended pending the outcome of Binion?s two intent-to-use applications. Even if Binion were to have gotten his applications published for opposition, Harrah?s (or whatever entity currently owns the goodwill associated with the name Binion?s in connection with the downtown Las Vegas property formerly known as Binion?s Horseshoe) surely would have filed oppositions against Binion?s two applications based on its priority.