Cunard Line Ltd.v.Cyrus Milanian

Trademark Trial and Appeal Board

Mar 29, 2002

No. 91116277 (T.T.A.B. Mar. 29, 2002)

3/29/02

Hearing: Paper No. 15
February 5, 2002 PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Cunard Line Limited
v.
Cyrus Milanian
_____

Opposition No. 116,277
to application Serial No. 75/526,403
filed on July 28, 1998
_____

Jeffrey R. Cohen of Millen, White, Zelano & Branigan for
Cunard Line Limited.

John H. Poltman and Frank L. Kubler of Oltman, Flynn &
Kubler for Cyrus Milanian.
______

Before Hairston, Walters and Rogers, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

Cyrus Milanian has filed an application to register
the “flag design” mark shown below,

THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 116,277
2

for services identified, following amendment, as:
“business management of resort hotels, casinos, and
theme parks for others and product merchandising” in
class 35; and “real estate development” in class 37.1
Registration has been opposed by Cunard Line
Limited. Opposer alleges that it has used the identical
flag design mark on “printed matter, namely posters and
postcards in the cruise travel field” since at least as
early as 1988, and on “cruise ship services;
entertainment in the form of night club shows and stage
shows featuring live bands, dance performances and guest
speakers; providing facilities in the nature of swimming
pools; physical fitness instruction; party planning;
casino services featuring card games; providing temporary
housing accommodations; travel agency services, namely,
making reservations and bookings for temporary lodging;
and food preparation” since as early as May 1998; and
that it has filed an application to register its flag
design mark for these services. Further, opposer alleges

1 Serial No. 75/526,403, filed July 28, 1998, based on
applicant’s allegation that it has a bona fide intention to use
the mark in commerce. The mark is described as a “a flag design
with a star,” and the mark is lined for the color red.
Opposition No. 116,277
3
that applicant’s flag design mark, if used in connection
with the services identified in applicant’s
Opposition No. 116,277
4
application, so resembles opposer’s flag design mark, as
to be likely to cause confusion, mistake or deception.
Applicant, in his answer to the notice of
opposition, has denied the salient allegations contained
therein. In addition, applicant has asserted that
opposer consented to applicant’s use of the involved
mark.
The record consists of the pleadings; the file of
the involved application; the testimony of opposer’s
witness Lyall Duncan with exhibits; and the testimony of
applicant Cyrus Milanian with exhibits. Both parties
filed briefs on the case and an oral hearing was held.2
Before turning to the merits of the case, we must
discuss one preliminary matter. We note that opposer, in
its brief on the case, incorporated a request to remand
applicant’s application to the Examining Attorney for re-
examination of an approved amendment to the recitation of
services which opposer maintains is beyond the scope of
the original recitation of services and, thus, an

2 We note that applicant, for the first time with his brief on
the case, submitted copies of two patents, which he owns.
Opposer, in its reply brief, moved to strike the patents on the
ground that they were untimely filed. The Board, in an order
dated June 26, 2001, granted the motion to strike, and thus, we
have not considered the patents in reaching our decision herein.
We hasten to add that even if we had considered the patents, our
decision herein would be the same.
Opposition No. 116,277
5
impermissible amendment under Trademark Rule 2.71(b).
The Board, in an

order dated April 12, 2001, denied opposer’s request,
pointing out that there is no provision in the Trademark
Rules of Practice for a motion to remand an application
involved in an opposition to the Examining Attorney for
further examination during the pendency of the
proceeding. In addition, we wish to make clear that it
is not a ground for opposition that an amendment to the
recitation of services in an application is beyond the
scope of the original recitation of services.3 Thus, we
will not consider the question of whether the amendment
was appropriate in this opposition.
We turn then to the merits of the case. It is
opposer’s position that confusion is likely in this case
because the marks are identical and opposer’s cruise
services, casino, entertainment, dining and lodging
services, in particular, are closely related to the
business development, product merchandising, and real
estate development services identified in applicant’s
application. Opposer acknowledges that it received from
Opposition No. 116,277
6
applicant a business plan for the development of a
casino-based resort in Las Vegas, Nevada with a Titanic
theme, and that the plan was misplaced. According to
opposer, however, there was no reference to the “flag
design” mark in applicant’s business plan. Moreover, it
is opposer’s contention that it never consented to
applicant’s use or registration of any marks.
Opposer took the testimony of Lyall Duncan, its
manager of legal affairs. Mr. Duncan identified four
promotional brochures for opposer’s services. These
brochures contain information about the cruises that
opposer offers, including information about
accommodations, entertainment, dining, facilities, travel
arrangements, and itineraries. One of the brochures is
titled “The Art of Cruising” and the three other
brochures bear the names of opposer’s cruise ships,
“Queen Elizabeth 2,” “Vistafjord,” and “Royal Viking
Sun,” respectively. Opposer’s flag design mark appears
on the flyleaf of the “Art of Cruising Brochure” and on
the back cover of the other three brochures. All of the
brochures are for cruises scheduled in 1999. “The Art of
Cruising” brochure bears a printing date of April 1998
and the other three brochures bear a printing date of May

3 Likewise, the disputed amendment is not a basis for remand
Opposition No. 116,277
7
1998. Mr. Duncan testified that it was his experience
that opposer’s promotional brochures were always mailed
promptly after they were printed. He identified a letter
dated March 25, 1998 from opposer’s director of marketing
services to Inktel, the company responsible for the
production and mailing of the brochures. The letter
indicates that between 200-250,000 copies of each of the
respective promotional brochures was to be mailed in May
1998 to travel agents and individual customers.
Further, Mr. Duncan testified that in late 1997 or
early 1998 opposer received an unsolicited business plan
from applicant. The plan, which is of record as
applicant’s trial deposition exhibit no. 1, seeks funding
for the development of a casino and resort in Las Vegas,
Nevada. The resort’s lodging and gaming areas are to be
housed in replicas of the Titanic and the Iceberg that
led to its demise. According to Mr. Duncan, shortly
after receipt of the plan, opposer made it clear to
applicant that it had no interest in either investing in,
or getting involved in applicant’s business idea. Mr.
Duncan identified a June 1, 1998 letter which he sent to
applicant concerning the business plan. In the letter,
Mr. Duncan acknowledges that the copy of the business

after issuance of this decision. See Trademark Rule 2.131.
Opposition No. 116,277
8
plan, which was sent to opposer, was misplaced, but
assures applicant that all discussions related to the
plan will be kept confidential. Further, the letter
states that “[w]e are not inclined at this time to
license or lease what we consider our trademarks to
anyone.”
Applicant, on the other hand, argues that opposer
does not have priority in this case because it has made
only “token use” of the flag design mark. Further,
applicant maintains that his flag design mark appeared in
the business plan which he sent to opposer; and that
during the course of discussions opposer consented to
applicant’s use and registration of the mark. Finally,
applicant contends that there is no likelihood of
confusion in this case because the parties’ services are
different. In support of this particular point,
applicant relies on action taken by the Administrator for
Trademark Classification and Practice in connection with
a letter of protest filed by applicant against opposer’s
application, who is alleged to have determined that the
parties’ services are different.
Applicant’s testimony centered on oral
communications between he and various officials of
opposer. Applicant was asked on direct examination
Opposition No. 116,277
9
whether opposer’s director of public relations ever said
anything about applicant proceeding with his business
plan. Applicant replied that:
Well, they liked the idea. But Captain Katsoufis’
Office -- Malena told me that Captain Katsoufis
said that because of the tragedy associated with the
ship and [sic] they gave up the idea, being
associated with that -- and this was repeated by the
public relations officer -- that they really don’t
want to have anything to do with the Titanic or the
White Star Line because the Titanic brought them bad
luck. And the White Star Line went out of business
because they couldn’t make money. And they want
to have nothing to do with it. But they will
provide me any information
that might be helpful to me. So that’s where it
was.
They said they have no -- I asked them, do you have
any claims regarding trademarks, especially because
I was interested in registering them. They said
they have abandoned.
I asked them, well are you going to oppose me?
And they said no.
Including Lyall Duncan [who] later came in the
picture, and I talked with him. And he said he is
not going to oppose me and Titanic is in a public
domain and they have even changed the name of the
company to Cunard at that time. That’s where
it was.
(Milanian deposition, pp. 6-7).

On cross-examination, opposer’s counsel asked
applicant to point out in his business plan exactly where
the flag design mark was used.

Q. Can you show me where the marks are used,
not conceptualized. Rhetorical [sic] aside,
where is the mark used in the document to
base your trademark rights?
A. The mark is used in the picture of the Titanic.
Q. Where is the picture.
A. You look at the picture and you see Titanic.
Opposition No. 116,277
10
Titanic has the White Star and the flag
associated with it. That’s the usage.
Q. Let’s take a look together in your business
plan itself. I’m looking at the depiction.
I don’t see one flag flying on that ship.
A. The flag design is very small right on top.
It’s a conceptual design.
Q. More importantly, as a person who enjoys
trademarks talking about token use, if in
fact there were a flag, and there is not a
flag, would you feel that that would be
trademark usage.
A. When you say Titanic, RMS Titanic, you say
White Star and the flag goes with it.
(Milanian deposition, pp. 28-29).

During the course of his deposition, Mr. Milanian
identified a copy of the letter of protest filed against
opposer’s application and a copy of the Administrator’s
action. In the letter of protest, applicant argues that
the “casino services featuring card games” in opposer’s
application are related to the services in applicant’s
application of “business management of resort hotels,
casinos, and theme parks of others.” Applicant requested
that opposer’s application be suspended pending
disposition of applicant’s application. The
Administrator for Trademark Classification and Practice
denied the letter of protest, stating that “[t]he
services as set forth in the applications differ to such
an extent that examination of the mark presented in the
above-identified application without consideration of the
Opposition No. 116,277
11
issue presented in the Letter of Protest is not
considered clear error.”
Having reviewed the record, we turn to the issues of
priority and likelihood of confusion. We find that the
testimony of opposer’s witness Mr. Duncan, along with the
exhibits made of record, establishes opposer’s use of its
flag design mark at least as early as May 1998 for its
cruise and travel-related services. The fact that the
mark appears on the flyleaf and/or back cover of
opposer’s promotional brochures, rather than on the front
cover of the brochures, does not, as applicant argues,
render the use defective. There is no question but that
the flag design mark is clearly depicted on the
brochures. Thus, we find that opposer’s use of its mark
was prior to the filing of applicant’s intent to use
application on July 28, 1998, which is the earliest date
on which applicant is entitled to rely.
With respect to the issue of likelihood of
confusion, we have, in making this determination,
considered those factors, as set forth in In re E.I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
Opposition No. 116,277
12
1973), which are relevant and for which there is evidence
of record, namely the marks and the services.4
At the outset, we note that there is no question
that the marks of the parties are identical. Applicant
admitted
at page 12 of his deposition that the marks are “exactly
the same.” The Board has stated in the past that “[i]f
marks are the same or almost so, it is only necessary
that there be a viable relationship between the goods or
services in order to support a holding of likelihood of
confusion.” In re Concordia International Forwarding
Corp., 222 USPQ 355, 356 (TTAB 1983).
We turn then to a consideration of the parties’
services. In order to support a finding of likelihood of
confusion, it is not necessary for the goods or services
of the parties to be similar or competitive, or even that
they move in the same channels of trade. It is
sufficient that the respective goods or services of the
parties are related in some manner, and/or that the

4 Although opposer also pleaded use of its flag design mark on
posters and postcards, it did not discuss, in its brief, the
issue of likelihood of confusion vis-à-vis these goods and
applicant’s services. Moreover, counsel for opposer, at the
oral hearing, stated that opposer was not relying on such use.
Thus, we have not considered these goods in our likelihood of
confusion determination.
Opposition No. 116,277
13
conditions and activities surrounding the marketing of
the goods or services are such
Opposition No. 116,277
14
that they would or could be encountered by the same
persons
under circumstances that could, because of the similarity
of the marks, give rise to the mistaken belief that they
originate from the same producer. In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB
1978).
Considering first applicant’s services of business
management of resort hotels, casinos and theme parks,
these types of properties feature the same essential
amenities as opposer’s cruise and travel related
services, i.e., accommodations, entertainment, dining,
etc. Similarly, applicant’s real estate development
services are without restriction as to type and thus are
broad enough to include the development of resort hotels,
casinos and theme parks, properties which, as we have
noted above, feature the same essential amenities as
opposer’s cruise and travel-related services. In
addition, with respect to applicant’s product
merchandising services, these services are broad enough
to encompass the promotion of virtually any product,
including products sold on cruise ships.5

5 The word “merchandising” is defined in Webster’s New
Collegiate Dictionary (1979)as: sales promotion as a
comprehensive function including market research, development of
Opposition No. 116,277
15
It is also reasonable to assume that applicant, in
connection with its business management, product
merchandising, and real estate development services, will

new products, coordination of manufacturing and marketing, and
effective advertising and selling.
Opposition No. 116,277
16
advertise in all the normal manners, which would include
newspapers, magazines and the like. Opposer’s cruise and
travel related services may also be advertised in the
same media. Moreover, although applicant’s business
management, product merchandising, and real estate
development services are of a nature that they would be
directed to business/property owners and investors, such
individuals are members of the general public, the class
of purchasers to whom opposer's services are directed.
Thus, the purchasers of the parties’ services overlap.
Under the circumstances, we find that the parties’
services are sufficiently related that if offered under
the identical flag design mark, confusion as to source or
sponsorship is likely to result. A business/property
owner and/or investor familiar with opposer’s cruise and
travel related services offered under its flag design
mark, upon encountering applicant’s business management,
product merchandising, and/or real estate development
services under the identical mark, would be likely to
perceive a relationship or association between the two
entities. This would especially be the case if applicant
were to follow through with a nautical theme-based resort
as outlined in his business plan.
Opposition No. 116,277
17
Applicant’s reliance on the action of the Trademark
Administrator for Classification and Practice in support
of his contention that there is no likelihood of
confusion in this case is misplaced. In considering a
letter of protest, that is, in determining whether
information therein should or should not be given to the
Examining Attorney, the standard used by the
Administrator is “clear error”. Clear error refers to an
error, which, if not corrected, would result in issuance
of a registration in violation of the Trademark Act. The
clear error standard is not the same as the test used in
determining likelihood of confusion. Thus, the fact that
the Administrator denied the letter of protest filed by
applicant against opposer’s application is not
controlling on whether there is a likelihood of confusion
in this case. In any event, the Board is not bound by
the decision of the Trademark Administrator for
Classification and Practice. Section 17 of the Trademark
Act, 15 USC §1067, gives the Board the authority and duty
to decide, in an opposition, whether a mark is entitled
to registration.
Similarly, applicant’s contention that opposer
consented to applicant’s use and registration of the flag
design mark is not well taken. In the absence of any
Opposition No. 116,277
18
corrobating evidence, applicant’s testimony on this point
is unconvincing. Opposer’s witness, Mr. Duncan, has
testified that opposer did not consent to applicant’s use
and registration of any marks, and opposer’s June 1, 1998
letter to applicant supports this position.
We should add that our review of applicant’s
business plan discloses no reference to or depiction of
the flag design mark.6 Applicant’s theory of imputing
knowledge to opposer of applicant’s desire to use and
register the flag design mark simply because the Titanic
flew this flag, and the Titanic is depicted in the plan
does not hold water.
A final comment is in order. It has not gone
without notice that applicant filed the involved
application some six weeks after receipt of the letter
advising him that
opposer was not inclined to license or lease any of its
trademarks. Opposer contends that it was not even aware
from the business plan and the parties’ discussions that
applicant desired to use and register this mark. Of
course, applicant contends otherwise. However, if, as
applicant maintains, opposer knew that applicant desired

6 We should point out that there is no dispute that the copy of
the business plan introduced at trial is identical to the copy
sent to opposer.
Opposition No. 116,277
19
to use and register the flag design mark, the June 1,
1998 letter from opposer should have at least raised a
question in applicant’s mind as to whether the flag
design mark was one of the trademarks opposer was not
inclined to license or lease. Stated differently, there
should have at least been a question in applicant’s mind
as to whether opposer was claiming rights in the flag
design mark.
Opposition No. 116,277
20
In sum, we conclude that confusion as to source or
sponsorship is likely to result from the contemporaneous
use of the identical flag design mark for opposer and
applicant’s related services.
Decision: The opposition is sustained and
registration to applicant is refused.