DLR Licensing, LLCv.Carnival Corpora-tion

Trademark Trial and Appeal Board

Oct 22, 2014

No. 92057150 (T.T.A.B. Oct. 22, 2014)

Goodman

Mailed: October 22, 2014

Cancellation No. 92057150
DLR Licensing, LLC
v.
Carnival Corporation

Before Seeherman, Wolfson and Masiello, Administrative Trademark
Judges.

By the Board:

Carnival Corporation (hereafter “Respondent”) owns Registration No.
40302941 for the mark FUN FOR ALL. ALL FOR FUN. in standard character
form for the following services:
International Class 39: Cruise ship services; Travel agency
services, namely, making reservations and bookings for
transportation; Organization of excursions; Travel, excursion
and cruise arrangement;

International Class 41: Entertainment services, namely, casino
services, organizing and conducting stage shows, nightclub
shows, contests, dances and parties; Provision of play facilities
for children; Night clubs; Recreational services in the nature of
pools; Miniature golf courses; Entertainment in the nature of a
waterslide; Entertainment in the nature of broadcasting or live
presentation of motion picture films; Satellite television
programs and satellite radio programs featuring comedy, drama,
variety, sports and fashion; entertainment in the nature of

1 Issued September 27, 2011.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
General Contact Number: 571-272-8500
THIS OPINION IS NOT
A PRECEDENT OF THE TTAB
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simulcast presentation of live parties, sporting contests,
interactive video games, deck board games, musical concerts,
theatrical and variety shows and performances; Entertainment,
namely, a continuing variety, comedy, sports, musical concert
shows broadcast over television, satellite, audio, and video
media; and

International Class 43: Hotel services; Travel agency services,
namely, making reservations and bookings for temporary
accommodations; Bar and cocktail lounge services; Restaurant
services; Catering services; Child care services.

Petitioner, DLR Licensing, LLC (hereafter “Petitioner”), filed a petition for
cancellation on April 25, 2013 seeking to cancel the registration as to the
Class 41 services and the following services in Class 43: “Bar and cocktail
lounge services; Restaurant services; Catering services; Child care services”
(hereafter all of the Class 41 services and the enumerated services in Class
43 will be referred to as the “Challenged Services”) on the grounds of
abandonment and fraud.2 In lieu of an answer, Respondent filed a motion to
dismiss to which Petitioner filed an amended pleading (first amended
petition for cancellation). The Board denied the motion to dismiss and
accepted the first amended petition for cancellation as the operative

2 With respect to the grounds for cancellation in Class 43, the claim seeking to
partially cancel certain services on the ground of abandonment would, if granted,
result in deletion only of the abandoned services. Harry Winston, Inc. v. Bruce
Winston Gem Corp., 111 USPQ2d 1419, 1434 (TTAB 2014). On the other hand, with
respect to the fraud claim, while a finding of fraud in connection with obtaining or
maintaining the registration for less than all services in a class would normally
result in cancellation of the entire class, see G&W Laboratories Inc. v. GW Pharma
Ltd., 89 USPQ2d 1571, 1573 (TTAB 2009), here Petitioner is seeking to only
partially cancel the registration in Class 43, and therefore, if successful, it still
would not be entitled to more than the relief it seeks. As a result, if Petitioner is
able to show fraud with respect to one or some of the Challenged Services in class
43, all of the Challenged Services in Class 43 would be deleted from the registration.

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pleading.3 In its answer to the first amended petition for cancellation,
Respondent denied the salient allegations.
On April 21, 2014, Respondent filed a motion for summary judgment on
the abandonment and fraud grounds. On May 23, 2014, Petitioner timely
filed a response to Respondent’s motion for summary judgment and a cross-
motion for summary judgment on the grounds of abandonment, fraud and, to
the extent that such claim is different from the ground of abandonment, that
the registration is void ab initio with respect to the Challenged Services, and
that the Challenged Services be deleted or, alternatively, restricted pursuant
to Section 18. The cross-motion for summary judgment was accompanied by
a motion for leave to amend and the proposed pleading (second amended
petition for cancellation) to add a void ab initio and a Section 18 claim with
respect to the Challenged Services.
Respondent filed a combined reply in support of its motion for summary
judgment, a response to Petitioner’s cross-motion for summary judgment and
a response to Petitioner’s motion for leave to amend. In its response to the
motion for leave to amend, Respondent has relied on the arguments made
and evidence provided on summary judgment with respect to the void ab
initio claim. Additionally, Respondent has made merits-based arguments as
to the Section 18 claim, accompanied by exhibits. We construe Respondent’s
response to the motion for leave to amend in part as its opposition and cross-

3 Respondent filed a second motion to dismiss that was denied by the Board.
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motion (void ab initio claim) to Petitioner’s cross-motion for summary
judgment on the proposed claims.
Motion for Leave to Amend
Under Fed. R. Civ. P. 15(a), leave to amend pleadings shall be freely given
when justice so requires. Consistent therewith, the Board liberally grants
leave to amend pleadings at any stage of the proceeding, unless the Board
finds that there has been undue delay that would prejudice the nonmoving
party, that the moving party has acted in bad faith, or that the amendment
would be futile. Foman v. Davis, 371 U.S. 178, 182 (1962); W.R. Grace & Co.
v. Arizona Feeds, 195 USPQ 670, 673 (Comm’r Pat. 1977) (citing Foman v.
Davis).
To the extent the Section 18 claim seeks to restrict the Challenged
Services based on channels of trade limitations that are alleged to avoid
confusion, we find the claim has been sufficiently pleaded. Eurostar Inc. v.
“Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d 1266, 1270-71 (TTAB
1994). To the extent that Petitioner relies on Section 18 to delete the
Challenged Services on the basis of abandonment due to three years non-use,
such a claim is a straight-forward abandonment claim rather than a claim
under Section 18, and therefore the abandonment ground as originally
pleaded is adequate. DAK Industries Inc. v. Daiichi Kosho Co., 35 USPQ2d
1434, 1438 (TTAB 1995); see also Johnson & Johnson v. Obschestvo s
Ogranitchennoy, 104 USPQ2d 2037, 2039 (TTAB 2012). Accordingly, leave to
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amend is denied to add a Section 18 claim to delete certain services based on
abandonment, and we strike this portion of the pleading, namely, paragraphs
20 and 22 and the wording “proposed deletion” from paragraph 24.
With respect to the “void ab initio” claim, we construe this claim as one of
non-use and will, going forward, refer to it as a “non-use ground.” We find the
pleading of this ground sufficient. Based on the allegations in the proposed
pleading, we treat the claim as seeking cancellation of the registration as to
the Challenged Services on grounds of non-use at the time the application
was filed.
Respondent has not argued that it will be prejudiced by the addition of the
Section 18 claim to restrict the Challenged Services. As to the non-use claim,
Respondent argues prejudice but alternatively submits that “in the interest
of judicial economy, Petitioner’s claim of [non-use] could be permitted and
immediately dismissed on summary judgment.” We find no prejudice in
allowance of these amendments.
Accordingly, leave to amend is granted to add the non-use claim as to the
Challenged Services and to add the Section 18 claim for a restriction as to the
Challenged Services. Leave to amend is denied to add the Section 18 claim
based on abandonment.
Cross-Motions for Summary Judgment

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We now turn to the cross-motions for summary judgment on the
abandonment, fraud, non-use and Section 18 grounds.4
Petitioner’s evidence on summary judgment consists of the declaration of
its counsel, Jessica Bromall Sparkman, (hereafter “Sparkman Declaration”)
and accompanying exhibits.
Respondent’s evidence on summary judgment with respect to the
abandonment, fraud and non-use grounds consists of the declaration of
James Berra, Chief Marketing Officer & Senior Vice President, Marketing,
(hereafter “Berra Declaration”) and accompanying exhibits, and the
declaration of Adam David Mandel, counsel for Respondent, (hereafter
“Mandel Declaration”) and accompanying exhibits. Respondent’s evidence
with respect to the Section 18 claim consists of TESS printouts of third-party
registrations.
A party is entitled to summary judgment when it has demonstrated that
there is no genuine dispute as to any material fact and that it is entitled to
judgment as a matter of law. Fed. R. Civ. P. 56(a). In reviewing a motion for

4 To the extent that we have considered any new claims set forth in the second
amended petition for cancellation, because no answer to the amended pleading has
been filed, we deem such new allegations to be denied for purposes of determining
Petitioner’s summary judgment motion. TBMP Section 528.07(a) (2014).
In its answer to the first amended petition for cancellation, Respondent asserted
the affirmative defense of failure to state a claim. However, Respondent did not seek
summary judgment on this defense nor did it raise the defense in response to
Petitioner’s motion for summary judgment. We consider the defense waived. See
Diversy Lever, Inc. v. Ecolab, Inc., 191 F.3d 1350, 1353, 52 USPQ2d 1062, 1064 (Fed.
Cir. 1999) (affirmative defense must be raised in response to a summary judgment
motion or it is waived).

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summary judgment, the evidentiary record and all reasonable inferences to
be drawn from the undisputed facts must be viewed in the light most
favorable to the nonmoving party. Olde Tyme Foods Inc. v. Roundy’s Inc.,
961 F.2d 200, 22 USPQ2d 1542, 1544 (Fed. Cir. 1992). The Board may not
resolve issues of material fact; it may only ascertain whether such issues are
present. See Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25 USPQ2d
2027 (Fed. Cir. 1993). When cross-motions for summary judgment are
presented, the Board evaluates each motion on its own merits and resolves
all doubts and inferences against the party whose motion is being considered.
Mingus Constructors, Inc. v. United States, 812 F.2d 1387, 1390–91 (Fed. Cir.
1987)). Even when all material facts are undisputed, the moving party must
show that the law applied to those facts requires a judgment in its favor or
the motion will be denied. Fed. R. Civ. P. 56(a).
Standing
Petitioner has submitted a copy of an Office action (Final Refusal) with
respect to its pleaded application Serial No. 85620665 wherein the
Examining Attorney has finally refused registration of Petitioner’s mark
FUN FOR ALL. ALL IN FUN on the basis of likelihood of confusion with the
mark in Respondent’s involved Registration No. 4030294. We find no
genuine dispute of material fact that Petitioner has standing. Kallamni v.
Khan, 101 USPQ2d 1864 (TTAB 2012) (finding standing by virtue of final
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refusal to register petitioner’s pending application based on respondent's
registration).
Grounds
With regard to the abandonment, fraud, and non-use claims, the parties
agree that there is no dispute as to certain material facts:
1) Respondent filed the underlying application which matured into the
registration at issue in this proceeding on August 26, 2009 under
Section 1(a). Registration file.

2) The slogan FUN FOR ALL. ALL FOR FUN. appears on
Respondent’s 128-page brochure entitled “2009-2010 Cruise
Vacations,” 1.2 million copies of which were printed in 2008. Berra
Declaration paragraph 3, Exhibit A.

3) Distribution of the 128-page 2009-2010 Cruise Vacations brochure
occurred from 2009 to 2010. Berra Declaration paragraphs 3 and 5,
Exhibit A.

4) The 128-page 2009-2010 Cruise Vacations brochure lists cruise
departure dates as early as January 1, 2009. Berra Declaration,
Exhibit A.

5) The slogan FUN FOR ALL. ALL FOR FUN. appears on
Respondent’s 12-page brochure entitled “Introducing Carnival
Dream,”400,000 copies of which were printed in January 2009. Berra
Declaration, paragraph 4, Exhibit B.

6) Distribution of the 12-page Introducing Carnival Dream brochure
occurred in 2009 and 2010. Berra Declaration paragraphs 4 and 5,
Exhibit B.

7) Both the 128-page 2009-2010 Cruise Vacations and 12-page
Introducing Carnival Dream brochures were distributed primarily to
Carnival’s travel agency partners for use with potential customers and
to fulfill customer requests. Berra Declaration paragraph 4, Exhibit A;
Mandell Declaration, Exhibit 4.

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An example of use of the mark on Respondent’s website (“Onboard
Experiences” web page) and an example of an associated webpage for the
specific service identified on the “Onboard Experiences” webpage follow:

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Although the parties do not dispute the before-mentioned facts, they do
dispute whether, as a matter of law, Respondent used the mark in a manner
that constitutes service mark use in connection with the Challenged Services.
Abandonment

Whether Respondent abandoned its rights in the mark with respect to the
Challenged Services?

A mark is deemed abandoned if its use has been discontinued without
intent to resume use. Trademark Act Section 45, 15 U.S.C. § 1127. Non-use
in the United States for a period of three consecutive years establishes a
prima facie case of abandonment. Id. To be successful on its motion,
Petitioner must show that Respondent’s use of the mark has been
discontinued for at least three consecutive years, or that Respondent has
discontinued use of the mark without an intent to resume use. Id.; see also,
On-Line Careline, Inc. v. America Online, Inc., 229 F.3d 1080, 1087, 56
USPQ2d 1471, 1476 (Fed. Cir. 2000) (citing 15 U.S.C. § 1127). Conversely,
Respondent, as the party moving for summary judgment to dismiss the claim
of abandonment, must establish continuous use of its mark for all of the
Challenged Services or, with respect to any period of nonuse, that it had an
intent to resume use. Regardless of which motion we consider, we must first
address an essential element, namely, whether Respondent’s use of the mark
as shown by the evidence constitutes use in connection with the Challenged
Services.
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In support of its motion, Respondent argues that “[t]he evidence as
submitted [brochures and web pages] shows that the mark is, and was, used
or displayed in the advertising” of the Challenged Services and that the
Challenged Services “have been rendered to persons within the United
States.”
In response, Petitioner submits that none of Respondent’s uses
“constitutes use in commerce of the Mark in connection with the Challenged
Services.” Petitioner argues that the manner of use is not in “direct
association” between the mark and the Challenged Services and that it is
unlikely that consumers will associate the mark with the Challenged
Services.
In particular, with respect to Respondent’s 128-page 2009-2010 Cruise
Vacations brochure, Petitioner submits that because the mark appears on
fewer than half of the pages in the brochure, and is in small font at the
bottom of the page where numerous other marks, texts and images appear,
“no consumer would perceive the Mark as identifying Respondent’s bar and
restaurant services, or any of the other Challenged Services available on
Respondent’s cruise ships.” As to Respondent’s website, Petitioner asserts
that the mark appears on the website in “small font at the bottom of the
page” and requires one to “scroll so far down the webpage to see the Mark,
that any information on the page about the Challenged Services is no longer
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visible.” Petitioner also contends that none of Respondent’s exhibits
evidences use in connection with “Broadcast Media Entertainment Services.”
Respondent argues that with respect to the brochures, “the font of the
mark on these brochure pages is not small as it is relative to the other font
sizes” and “the mark appears in red and blue contrasting colors” “most often
with the designation ‘TM’ or ‘SM’” with “sufficient prominence that it is not
simply informational material.” Respondent points out that the brochure
“opens as a two page spread . . . and the mark appears in connection with the
services being offered on the adjoining page.” Respondent further points to a
“Cutaway view of the cruise ship” provided in the 128-page 2009-2010 Cruise
Vacations brochure (reproduced supra) which refers to numerous services
and displays the mark prominently shown on a red background. Respondent
argues that all uses of the mark on interior pages of the brochure point the
reader to web pages, reinforcing the mark’s association with the Challenged
Services. As to the webpage use, Respondent points to the webpage entitled
“Onboard Experiences” that “advertises over 70 types of services to be found
on Carnival’s cruise ships” and the “linked-to webpages.” Respondent
submits “that [the Onboard Experiences] webpage and the linked-to
webpages for each of these services display the mark in website advertising.”
Respondent contends that the consumer “makes a mental connection”
between the mark and the services when he or she scrolls down the webpage
and it is “mere conjecture” that the consumer “will not make a mental
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connection.” As to the broadcast media entertainment services, Respondent
submits that the “nature and breadth of broadcast media services” are
advertised in its brochures and webpages.
In order to constitute service mark use, a mark must be used in a manner
that would be perceived by the relevant public as identifying the specified
services and indicating their source. See In re Advertising & Marketing
Development Inc., 821 F.2d 614, 2 USPQ2d 2010, 2014 (Fed. Cir. 1987) (it is
implicit in the statutory definition of a service mark that a service mark be
used to identify the named services for which registration is sought and to
indicate the source of the services). It is not enough to provide the services;
the mark must also be displayed “in the sale or advertising of [the] services”
in such a way as to identify and distinguish the named services. Trademark
Act Section 45, 15 U.S.C. § 1127; In re Advertising & Marketing Development
Inc., 2 USPQ2d at 2014.
In this case, the FUN FOR ALL. ALL FOR FUN. slogan or tag line is not
used to identify one particular service; rather, it is used in connection with
numerous services provided by Respondent. In the 128-page 2009-2010
Cruise Vacations brochure, the mark FUN FOR ALL. ALL FOR FUN. is
ubiquitous; it appears 49 times (48 times inside the brochure and once on the
back of the brochure) on alternating pages as a slogan or tagline. In almost
all cases, it is not part of the ordinary text, but appears in the margin, set off
from the rest of the text in different typeface. When the slogan is viewed in
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the context of the entire brochure, which is how a consumer would perceive it,
it is clear to us that a consumer would associate the FUN FOR ALL. ALL
FOR FUN. slogan or tag line with all of the services mentioned or shown in
the brochure.
A review of Respondent’s brochures and website shows that Respondent
has used its slogan as a service mark in connection with all of the Challenged
Services in Class 43 and many of the Challenged Services in Class 41. See
for example, the following pages of the 128-page 2009-2010 Cruise Vacations
brochure:
• 17 TTABVUE at 23, 27-28 (entertainment in the nature of a
waterslide);
• 17 TTABVUE at 28 (bar services, miniature golf courses);
• 17 TTABVUE at 37-38, showing the ship layout and the location of
various ship activities (bar and cocktail lounge services, restaurant
services and child care services, casino services, entertainment in the
nature of a waterslide, provision of play facilities for children,
recreational services in the nature of pools, entertainment in the
nature of broadcasting or live presentation of motion picture films,
organizing and conducting stage shows, dancing);
• 17 TTABVUE at 42, 52 (nightclubs, casino, organizing and conducting
stage shows, nightclub shows);
• 17 TTABVUE at 46 (child care, organizing and conducting parties,
dances);
• 17 TTABVUE at 147 (catering services);
• 17 TTABVUE at 23 (miniature golf courses, entertainment in the
nature of a waterslide, recreational services in the nature of pools);
• 17 TTABVUE at 30 (entertainment in the nature of live broadcasting
or presentation of motion picture films); and
• 17 TTABVUE at 40 (restaurant services).

On the “Onboard Experiences” webpage, 17 TTABVUE at 245, and the
associated webpages, 17 TTABVUE at 246-261, the slogan or tagline FUN
FOR ALL. ALL FOR FUN. is ubiquitous as well. It is located on the bottom
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right of the “Onboard Experiences” webpage and is also in that same location
at the associated webpage for each specific service. The “Onboard
Experiences” webpage includes numerous small photographs and text
identifying Respondent’s various services and the associated webpages
identify the specific services at issue in more detail.
Accordingly, we find that there is no genuine dispute of material fact
that Respondent is using the slogan FUN FOR ALL. ALL FOR FUN. in
connection with the following Class 41 services: “Entertainment services,
namely, casino services, organizing and conducting stage shows, nightclub
shows, dances and parties; Provision of play facilities for children; Night
clubs; Recreational services in the nature of pools; Miniature golf courses;
Entertainment in the nature of a waterslide; and Entertainment in the
nature of broadcasting or live presentation of motion picture films”; and in
connection with the Challenged Services in Class 43: “Bar and cocktail lounge
services; Restaurant services; Catering services; Child care services.”
Further, as to the timing of Respondent’s use of its mark, we find that
there is no genuine dispute of material fact that the 128-page 2009-2010
Cruise Vacations brochure and 12-page Introducing Carnival Dream
brochure have been in use since prior to or as early as the filing date of the
underlying application. Berra declaration, paragraphs 3-5. In particular,
there is no dispute that these brochures were distributed throughout 2009
and 2010. We therefore find that the mark was in use in commerce for certain
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Class 41 services and the Challenged Services in Class 43 as of the filing date
of the application. We further find that there has not been a three-year
period of non-use that would result in a prima facie showing of abandonment.
Accordingly, with respect to the parties’ cross-motions for summary
judgment on the claim of abandonment:
In Class 43: Petitioner’s motion is DENIED, Respondent’s motion is
GRANTED, and judgment is entered in Respondent’s favor.
In Class 41: Petitioner’s motion is DENIED, Respondent’s motion is
GRANTED and judgment is entered in Respondent’s favor with respect to the
following services in Class 41: “Entertainment services, namely, casino
services, organizing and conducting stage shows, nightclub shows, dances
and parties; Provision of play facilities for children; Night clubs; Recreational
services in the nature of pools; Miniature golf courses; Entertainment in the
nature of a waterslide; and Entertainment in the nature of broadcasting or
live presentation of motion picture films.”
The parties’ cross-motions with respect to the remaining services in
Class 41: “organizing and conducting contests;” “Satellite television programs
and satellite radio programs featuring comedy, drama, variety, sports and
fashion; Entertainment in the nature of simulcast presentation of live
parties, sporting contests, interactive video games, deck board games,
musical concerts, theatrical and variety shows and performances;
Entertainment, namely, a continuing variety, comedy, sports, musical concert
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shows broadcast over television, satellite, audio, and video media,” (hereafter
“Remaining Class 41 Services”) are DENIED as there is a genuine dispute as
to whether Respondent was using the mark in connection with the
Remaining Class 41 Services.
Fraud
Whether Respondent obtained its registration fraudulently by making false
statements regarding use of the mark in connection with the Challenged
Services at the time of filing the application?

Fraud in obtaining a trademark registration occurs “when an applicant
knowingly makes false, material representations of fact in connection with
his application.” In re Bose Corp., 580 F.3d 1240, 91 USPQ2d 1938, 1939
(Fed. Cir. 2009), citing Torres v. Cantine Torresella S.r.l., 808 F.2d 46, 1
USPQ2d 1483, 1484 (Fed. Cir. 1986); Nationstar Mortg. LLC v. Ahmad,
Opposition No. 91177036 __ USPQ2d ___ (TTAB September 30, 2014). To
constitute fraud on the USPTO, the statement must be (1) false, (2) a
material representation and (3) made knowingly with intent to deceive the
USPTO. Mister Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d
1064, 1065 (TTAB 1992).
Petitioner claims that Respondent falsely stated in its application that it
was using the mark in connection with all of the Challenged Services and
that such statement was a material misrepresentation made with intent to
deceive the Office.
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Because we have found as a matter of law that Respondent was using the
mark in commerce in connection with the Challenged Services in Class 43 as
of the date on which the underlying application was filed, Petitioner cannot
meet the first element of the ground of fraud, namely, that Respondent made
a false statement in connection with these services. As for Class 41, as we
have previously found, Respondent’s allegations of use of the mark were not
false as to many of the identified services, but there is a genuine dispute as to
whether Respondent was using the mark in connection with the Remaining
Class 41 Services.
Accordingly, with respect to the parties’ cross-motions for summary
judgment on the claim of fraud:
In Class 43: Petitioner’s motion is DENIED, Respondent’s motion is
GRANTED, and judgment is entered in Respondent’s favor.
In Class 41: The parties’ cross-motions for summary judgment on the
fraud ground are DENIED.6
Non-use
Whether Respondent was using the mark in connection with the
Challenged Services at the time of filing the application?

We now turn to the cross-motions for summary judgment with respect to
non-use.

6 If fraud is found as to any of the Remaining Class 41 Services, cancellation of the
registration with respect to the entire class will result. G&W Laboratories Inc., 89
USPQ2d at 1573.
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A registration issued under Trademark Act Section 1 requires use in
commerce either at the time that the use-based application is filed or, for an
application filed on the basis of intent to use, at the time the applicant’s
allegation of use is filed. Trademark Act Section 1; 15 U.S.C. § 1051. In this
particular case, the question is whether the mark in the underlying use-
based application was in use in connection with the Challenged Services as of
the application filing date.
We have determined, as discussed supra, that the manner of use in the
brochures constitutes use in connection with all of the Challenged Services in
Class 43 and with the following Class 41 services: “Entertainment services,
namely, casino services, organizing and conducting stage shows, nightclub
shows, dances and parties; Provision of play facilities for children; Night
clubs; Recreational services in the nature of pools; Miniature golf courses;
Entertainment in the nature of a waterslide; Entertainment in the nature of
broadcasting or live presentation of motion picture films.” Further, as we
previously stated, there is a genuine dispute as to whether Respondent had
used its mark as of the application filing date in connection with the
Remaining Services in Class 41.
Accordingly, with respect to the parties’ cross-motions for summary
judgment on the claim of non-use:
In Class 43: Petitioner’s motion is DENIED, Respondent’s motion is
GRANTED and judgment is entered in Respondent’s favor.
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In Class 41: The parties’ cross-motions for summary judgment are
DENIED.
The parties are further advised that, in accordance with Spirits
International B.V v. S.S. Taris Zeytin Ve Zeytinyagi Tarim Satis
Kooperatifleri Birligi, 99 USPQ2d 1545 (TTAB 2011) and Grand Canyon
West Ranch, LLC v. Hualapai Tribe, 78 USPQ2d 1696 (TTAB 2006), if
Respondent goes to trial retaining all of the Remaining Services in Class 41
in the registration, and Petitioner is able to prove at trial that Respondent
had not made use of the mark on one or more of the Remaining Services in
Class 41 at the time it filed its underlying application for registration, Class
41 of the registration will be cancelled in its entirety.7
Section 18
Whether the Challenged Services in Respondent’s Registration are subject
to a restriction?

7 Absent a finding of fraud, a registrant which did not use the mark on all of the
goods or services identified in the underlying application may “cure” this problem by
deleting from the registration the goods or services for which it had not used the
mark as of the filing date of the application and accepting judgment with respect to
the deleted goods or services. Cf. Spirits International , 99 USPQ2d at 1547 n.3 (if
an applicant believes an opposition is directed to particular goods in the identified
class rather than the entire class, the applicant can avail itself of the divisional
procedure or move to delete the goods from its identification; sustaining opposition
brought against entire class for lack of bona fide intent to use the mark in
commerce, though plaintiff asserted lack of bona fide use only as to some of the
goods in the opposed class); Grand Canyon West, 78 USPQ2d at 1698 (applicant who
did not use the mark on certain of the goods in a use-based application may cure the
problem by amending some or all of the goods to Section 1(b)). If a party fails to
effect a cure to delete certain goods or services for which there was no use, and
plaintiff is successful in proving non-use with respect to any of the goods or services
in that class at the time of application, the Board proceeding will be sustained
against the class in its entirety.
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We now turn to Petitioner’s motion for summary judgment on the Section
18 claim. Petitioner requests that the registration be restricted pursuant to
Section 18 to limit all the Challenged Services by the addition of the clause
“provided on board a cruise ship,” such that the services in these classes
would read as follows:
International Class 41: Entertainment services, namely, casino
services, organizing and conducting stage shows, nightclub
shows, contests, dances and parties; Provision of play facilities
for children; Night clubs; Recreational services in the nature of
pools; Miniature golf courses; Entertainment in the nature of a
waterslide; Entertainment in the nature of broadcasting or live
presentation of motion picture films; Satellite television
programs and satellite radio programs featuring comedy, drama,
variety, sports and fashion; Entertainment in the nature of
simulcast presentation of live parties, sporting contests,
interactive video games, deck board games, musical concerts,
theatrical and variety shows and performances; Entertainment,
namely, a continuing variety, comedy, sports, musical concert
shows broadcast over television, satellite, audio, and video
media, all of the foregoing services provided on board a cruise
ship;

International Class 43: Hotel services; Travel agency services,
namely, making reservations and bookings for temporary
accommodations; Bar and cocktail lounge services provided on
board a cruise ship; Restaurant services provided on board a
cruise ship; Catering services provided on board a cruise ship;
Child care services provided on board a cruise ship.

A party seeking a Section 18 restriction must plead and prove that (1) the
adverse party is not using its mark on the goods or services sought to be
excluded by the proposed restriction, and (2) a finding of likelihood of
confusion will be avoided by entry of the restriction of the goods or services,
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29
i.e., that the proposed restriction is commercially significant. Eurostar v.
“Euro-Star” Reitmoden GmbH & Co. KG, 34 USPQ2d at 1270.
In its Section 18 claim Petitioner has alleged that the Examining Attorney
has refused registration of its pending application in view of Respondent’s
registration, and that it seeks to avoid a likelihood of confusion by restricting
the Challenged Services to being “services provided on board a cruise ship.”8
Petitioner states in its motion that it would restrict its recitation of services
to exclude “restaurant and bar services offered on board cruise ships.”9
Aside from arguing that the restriction is not commercially significant,
Respondent argues that some of the particular services for which Petitioner
seeks a restriction warrant no modification because there would be no
likelihood of confusion either with or without the restriction, as the services
are so different in nature from those of Petitioner that no likelihood of
confusion would exist. For example, Respondent argues that there is no
reasonable basis for finding likelihood of confusion between its child care
services and Petitioner’s restaurant and bar services. On the other hand,
with respect to other of the services, Respondent argues that a restriction
would not avoid likelihood of confusion, pointing to third-party registrations

8 As noted supra, Petitioner has submitted a copy of the of an Office action (Final
Refusal) with respect to its pleaded application Serial No. 85620665.
9 See Aries Systems Corp. v. World Book Inc., 23 USPQ2d 1742, 1749 n.24 (TTAB
1992) (when a party moves for summary judgment on a Section 18 restriction “it
should also include, either in its pleading or by motion under Trademark Rule
2.133(a), any limitation it may be willing to accept to its own application or
registration. See Trademark Rule 2.133(b).”)
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30
for both restaurant services and cruise ship services to show that these
services are related.
After reviewing the evidence and arguments, we find genuine disputes of
material fact exist, at a minimum, as to whether a likelihood of confusion
would be avoided by adding the restriction “provided on board cruise ships” to
each of the Challenged Services.10 Accordingly, with respect to the Section 18
claim as to the Challenged Services: Petitioner’s motion for summary
judgment is DENIED.
Conclusion
As to Class 43: Respondent’s motion for summary judgment is GRANTED
as to the abandonment, fraud and non-use grounds (and Petitioner’s cross-
motion is DENIED). Petitioner’s motion for summary judgment is DENIED
as to the proposed Section 18 restriction.
As to Class 41: The parties’ cross-motions for summary judgment as to
the fraud and non-use claims, and Petitioner’s motion for summary judgment
as to the Section 18 restriction are DENIED. Respondent’s motion for
summary judgment is GRANTED IN PART (and Petitioner’s cross-motion is
DENIED) as to the abandonment claim in connection with the following
services: “Entertainment services, namely, casino services, organizing and
conducting stage shows, night club shows, dances and parties; Provision of

10 Of course, Petitioner is free to refer to Respondent’s statement in arguing no
likelihood of confusion to the Examining Attorney in connection with its pending
application, and perhaps get a clearer statement as to which of the services
identified in Respondent’s registration are the basis for the likelihood of confusion
refusal.
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31
play facilities for children; Night clubs; Recreational services in the nature of
pools; Miniature golf courses; Entertainment in the nature of a waterslide;
Entertainment in the nature of broadcasting or live presentation of motion
picture films.”
The parties’ cross-motions for summary judgment are DENIED as to the
abandonment claim in connection with the following services: “organizing and
conducting contests” and “Satellite television programs and satellite radio
programs featuring comedy, drama, variety, sports and fashion;
Entertainment in the nature of simulcast presentation of live parties,
sporting contests, interactive video games, deck board games, musical
concerts, theatrical and variety shows and performances; Entertainment,
namely, a continuing variety, comedy, sports, musical concert shows
broadcast over television, satellite, audio, and video media.”
IN SUMMARY, the abandonment, fraud and non-use claims are
dismissed as to Class 43; and the abandonment claim is dismissed as to the
following Class 41 services: “Entertainment services, namely, casino services,
organizing and conducting stage shows, night club shows, dances and parties;
Provision of play facilities for children; Night clubs; Recreational services in
the nature of pools; Miniature golf courses; Entertainment in the nature of a
waterslide; Entertainment in the nature of broadcasting or live presentation
of motion picture films.”
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32
The proceeding goes forward on the abandonment claim with respect to
the following Class 41 services: “organizing and conducting contests;”
“Satellite television programs and satellite radio programs featuring comedy,
drama, variety, sports and fashion; Entertainment in the nature of simulcast
presentation of live parties, sporting contests, interactive video games, deck
board games, musical concerts, theatrical and variety shows and
performances; Entertainment, namely, a continuing variety, comedy, sports,
musical concert shows broadcast over television, satellite, audio, and video
media.” The proceeding goes forward on the fraud and non-use claims with
respect to the services in Class 41 and on the proposed Section 18 restriction
with respect to the Challenged Services, i.e., all the services in Class 41 and
the four previously enumerated services in Class 43.
Petitioner is allowed until TWENTY DAYS from the mailing date of this
order to file a third amended petition for cancellation with respect to
abandonment, fraud, non-use and Section 18, omitting those claims for
which partial summary judgment has been entered, and those claims which
have been stricken.
Respondent is allowed until TWENTY DAYS from date of service of the
amended petition for cancellation to serve and file an answer thereto.
Proceedings are resumed.
Dates are reset as follows:
Expert Disclosures Due 11/26/2014
Discovery Closes 12/26/2014
Plaintiff's Pretrial Disclosures Due 2/9/2015
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33
Plaintiff's 30-day Trial Period Ends 3/26/2015
Defendant's Pretrial Disclosures Due 4/10/2015
Defendant's 30-day Trial Period Ends 5/25/2015
Plaintiff's Rebuttal Disclosures Due 6/9/2015
Plaintiff's 15-day Rebuttal Period Ends 7/9/2015

In each instance, a copy of the transcript of testimony, together with
copies of documentary exhibits, must be served on the adverse party within
thirty days after completion of the taking of testimony. Trademark Rule
2.l25.
Briefs shall be filed in accordance with Trademark Rules 2.128(a) and (b).
An oral hearing will be set only upon request filed as provided by Trademark
Rule 2.l29.