E-Suites Inc.

Trademark Trial and Appeal Board

May 31, 2012

No. 85021590 (T.T.A.B. May. 31, 2012)

THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.

Mailed: May 31, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re E-Suites Inc.
________

Serial No. 85021590
_______

Michael R. Collins of Collins & Collins for E-Suites Inc.

April Roach, Trademark Examining Attorney, Law Office 115
(John Lincoski, Managing Attorney).
_______

Before Grendel, Cataldo and Wolfson,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

Applicant, E-Suites Inc., filed an application to
register in standard characters on the Principal Register
the mark THE CHAMPAGNE LODGE & LUXURY SUITES for
“hotels” in International Class 43.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that

1 Application Serial No. 85021590 was filed on April 23, 2010,
based upon applicant’s assertion of January 1, 2007 as a date of
first use of the mark in commerce. In response to the examining
attorney’s requirement, applicant disclaimed LODGE & LUXURY
SUITES.
Ser. No. 85021590
2
applicant’s mark, as used in connection with its services,
so resembles the mark CHAMPAGNE TOWERS in typed or standard
characters2 for “resort hotel and restaurant services” in
International Class 42,3 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the examining attorney filed briefs on the
issue under appeal.
Likelihood of Confusion
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set
forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the relationship between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA

2 Trademark Rule 2.52(a) was amended in 2003 to refer to “typed
drawings” as “standard character” drawings. See Trademark Rule
2.52(a); 37 C.F.R. 2.52(a).

3 Registration No. 1551437 issued on August 8, 1989 with a
disclaimer of TOWERS. Section 8 affidavit accepted; Section 15
affidavit acknowledged. Renewed.

Ser. No. 85021590
3
1976). See also In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1533 (Fed. Cir. 1997).
The Services, Trade Channels, and Classes of
Purchasers

Likelihood of confusion is determined on the basis of
the goods or services as they are identified in the
application and registration at issue. In re Elbaum, 211
USPQ 639, 640 (TTAB 1981); and In re William Hodges & Co.,
Inc., 190 USPQ 47, 48 (TTAB 1976). In this case,
applicant’s “hotels,” recited without any limitation as to
type, must be presumed to include registrant’s more
narrowly identified “resort hotel” services. See Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority
is legion that the question of registrability of an
applicant’s mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the particular
channels of trade or the class of purchasers to which the
sales of goods are directed”).
As a result, we are not persuaded by applicant’s
arguments and evidence that registrant’s mark “is used to
Ser. No. 85021590
4
designate special rooms within the resort hotels”4 that
themselves are identified by other marks. As the Court of
Customs and Patent Appeals, the predecessor of our primary
reviewing court, explained in Tuxedo Monopoly, Inc. v.
General Mills Fun Group, Inc., 648 F.2d 1335, 209 USPQ 986,
988 (CCPA 1981):
Here, appellant seeks to register the
word MONOPOLY as its mark without any
restrictions reflecting the facts in
its actual use which it argues on this
appeal prevent likelihood of confusion.
We cannot take such facts into
consideration unless set forth in its
application.

Likewise, in this case, we must also analyze the
similarity or dissimilarity and nature of the services
based on the description thereof set forth in the
application and the registration at issue. In other words,
we may not limit or restrict the services listed in the
cited registration to certain rooms within registrant’s
resort hotels. Therefore, we must construe applicant’s
“hotels” as encompassing resort hotel services as recited
in the cited registration.
Neither are we persuaded by applicant’s arguments that
because its hotels are located “many states away”5 from

4 Applicant’s brief, unnumbered page 1.

5 Id.

Ser. No. 85021590
5
those of registrant, confusion is unlikely. Neither the
involved application nor the cited registration is
restricted as to geographic territory. See Sections 2(d),
17 and 18 of the Trademark Act; Trademark Rules 2.99(h) and
2.133(c); and TBMP §1101.02 (3d ed. 2011). Inasmuch as
registrant has obtained and applicant seeks registration of
their marks without geographic limitation, we will not
contemplate any such limitations based upon extrinsic
evidence.
Furthermore, to the extent that applicant’s
allegations constitute a collateral attack on registrant’s
registration, they are impermissible. Section 7(b) of the
Trademark Act, 15 U.S.C. §1057(b), provides that a
certificate of registration on the Principal Register shall
be prima facie evidence of the validity of the
registration, of the registrant’s ownership of the mark and
of the registrant’s exclusive right to use the mark in
connection with the goods or services identified in the
certificate. During ex parte prosecution, including an ex
parte appeal, an applicant will not be heard on matters
that constitute a collateral attack on the cited
registration. In re Dixie Restaurants, Inc., 105 F.3d
1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997); and In re
Peebles Inc., 23 USPQ2d 1795, 1797 n.5 (TTAB 1992). Thus,
Ser. No. 85021590
6
to the extent that applicant is arguing that the cited
registration should be accorded a narrow scope of
geographic protection, such arguments are impermissible in
the context of an ex parte appeal.
In view of the foregoing, we find that applicant’s
services, i.e., “hotels” encompass in part and thus are
legally identical in part to the “resort hotel” services in
the cited registration.
In addition, neither applicant’s nor registrant’s
recitation of services contains any limitations regarding
their channels of trade or the consumers to whom the
services are marketed. Accordingly, applicant’s and
registrant’s services are presumed to be suitable for any
use that is normal therefor, and also to move in all normal
channels of trade and be available to all classes of
potential consumers. That is to say, where the service in
the cited registration and/or application are broadly
identified as to their nature and type (as is the case
herein with respect to the involved application), such that
there is an absence of any restrictions as to the channels
of trade and no limitation as to the classes of purchasers,
it is presumed that in scope the recitation of services
encompasses not only all the services of the nature and
type described therein, but that the identified services
Ser. No. 85021590
7
are offered in all channels of trade which would be normal
therefor, and that they would be purchased by all potential
buyers thereof. Genesco Inc. v. Martz, 66 USPQ2d 1260,
1268 (TTAB 2003) (“Given the in-part identical and in-part
related nature of the parties’ goods, and the lack of any
restrictions in the identifications thereof as to trade
channels and purchasers, these clothing items could be
offered and sold to the same classes of purchasers through
the same channels of trade”). See also In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994) (In view of the
identity of the goods and trade channels, the goods must be
presumed to be sold to the same class of purchasers).
Accordingly, these du Pont factors all favor a finding
of likelihood of confusion.
The Marks
We turn then to the first du Pont factor, i.e.,
whether applicant’s mark and registrant’s mark are similar
or dissimilar when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. See Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005). We note initially that the test
under the first du Pont factor is not whether the marks can
be distinguished when subjected to a side-by-side
Ser. No. 85021590
8
comparison, but rather whether the marks are sufficiently
similar in terms of their overall commercial impression
that confusion as to the source of the services offered
under the respective marks is likely to result. The focus
is on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975).
We further note that under actual marketing
conditions, consumers do not necessarily have the luxury of
making side-by-side comparisons between marks, and must
rely upon their imperfect recollections. See Dassler KG v.
Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980).
Finally, we note that, “[w]hen marks would appear on
virtually identical ... services, the degree of similarity
[of the marks] necessary to support a conclusion of likely
confusion declines.” See Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698 (Fed.
Cir. 1992), cert. denied, 506 U.S. 1034 (1994). See also
ECI Division of E-Systems, Inc. v. Environmental
Communications Inc., 207 USPQ 443, 449 (TTAB 1980).
In this case, applicant’s mark consists of the wording
THE CHAMPAGNE LODGE & LUXURY SUITES and the mark in the
cited registration consists of the wording CHAMPAGNE
Ser. No. 85021590
9
TOWERS. The examining attorney made of record the
following definitions of terms comprising applicant’s mark:
LODGE – a resort hotel; LUXURY – a condition of abundance
or great ease and comfort, sumptuous environment; and SUITE
– a group of rooms occupied as a unit.6 The examining
attorney further made of record the following definition of
TOWER – tall building, a tall structure.7 Based upon these
definitions, we find that the disclaimed terms LODGE &
LUXURY SUITES and TOWERS merely describe a feature or
characteristic of the recited services, and thus possess
less source-identifying significance than the term
CHAMPAGNE shared by both marks.
While no definition of CHAMPAGNE is of record, we
observe that the term, at worst, appears to suggest that
the services provided by applicant and registrant are
luxurious or of high quality. Certainly there is no
evidence to suggest that CHAMPAGNE describes the services
in the application or registration at issue. Thus, we find
CHAMPAGNE to be the dominant term in both marks. It is a
well-established principle that, in articulating reasons
for reaching a conclusion on the issue of likelihood of

6 All definitions retrieved from Merriam-Webster Online
Dictionary, (2010) at merriam-webster.com.

7 Encarta World English Dictionary, (North American Edition)
(2009).
Ser. No. 85021590
10
confusion, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a
particular feature of a mark, provided the ultimate
conclusion rests on a consideration of the marks in their
entireties. See In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Furthermore, we note that CHAMPAGNE, the term which
the marks share in common, also encompasses the first word
in both marks. Presto Products, Inc. v. Nice-Pak Products
Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)(“…[it is] a matter of
some importance since it is often the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and remembered.”). See also Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73
USPQ2d at 1692 (“The presence of this strong distinctive
term as the first word in both parties’ marks renders the
marks similar, especially in light of the largely laudatory
(and hence non-source identifying) significance of
ROYALE.”). In addition, consumers are often known to use
shortened forms of names, and it is foreseeable that
consumers would refer to applicant’s and registrant’s hotel
services as “CHAMPAGNE.” Cf. In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978) [Rich,
J., concurring: “the users of language have a universal
Ser. No. 85021590
11
habit of shortening full names – from haste or laziness or
just economy of words”]. The identity of this first, and
most distinctive, term in the marks results in a strong
degree of similarity between them in appearance and sound
notwithstanding the differences engendered by the
additional, less distinctive, wording in the marks. We
agree with applicant that LODGE & LUXURY SUITES has a
different meaning from TOWERS. Nonetheless, we observe
that CHAMGANGE LODGE & LUXURY SUITES connotes a luxurious
resort hotel suite and CHAMPAGNE TOWERS similarly suggests
a luxurious tall building. Thus, when viewed as a whole,
the marks possess similar connotations or meanings.
In view of the foregoing, we find that consumers who
are familiar with the mark, CHAMPAGNE TOWERS, used in
connection with registrant’s services, who then see the
mark CHAMPAGNE LODGE & LUXURY SUITES, used in connection
with applicant’s services which are identical in part, are
likely to view the marks as variations of each other, but
indicating a single source. Thus, despite their
differences the marks, taken as a whole, are highly similar
in appearance, sound, connotation and commercial
impression. Accordingly, this du Pont factor favors a
finding of likelihood of confusion.
Actual Confusion
Ser. No. 85021590
12
The final du Pont factor discussed by applicant and
the examining attorney is that of the lack of instances of
actual confusion. Applicant asserts, and has submitted the
declaration of one of its officers, that the absence of
actual confusion for nearly five years suggests no
likelihood of confusion. However, it is not necessary to
show actual confusion in order to establish likelihood of
confusion. See Weiss Associates Inc. v. HRL Associates
Inc. 902 F.2d 1546, 223 USPQ 1025 (Fed. Cir. 1990).
Particularly in an ex parte proceeding, applicant's
assertion of the absence of actual confusion is of little
probative value in our determination on the issue of
likelihood of confusion because the Board cannot readily
determine whether there has been a significant opportunity
for actual confusion to have occurred, such that the
absence of confusion is meaningful. See In re Opus One
Inc., 60 USPQ2d 1812, 1817 (TTAB 2001); In re Kangaroos
U.S.A., 223 USPQ 1025 (TTAB 1984); and In re Jeep Corp.,
222 USPQ 333 (TTAB 1984). In those situations where the
Board has recognized the absence of actual confusion as
probative in an ex parte setting, there existed a
"confluence of facts" which together strongly suggested
that the absence of confusion was meaningful and should be
given probative weight. See In re Opus One Inc., supra;
Ser. No. 85021590
13
and In re Jeep Corp., supra. There is no evidence that
such a "confluence of facts" is present in this record.
Moreover, the test under Section 2(d) is not actual
confusion but likelihood of confusion. See In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003) (“uncorroborated statements of no known instances of
actual confusion are of little evidentiary value.”). See
also, In re Kangaroos U.S.A., 223 USPQ 1025 (TTAB 1984);
and In re General Motors Corp., 23 USPQ2d 1465 (TTAB 1992).
As a result, this du Pont factor must be considered
neutral, or to only slightly favor applicant.
Summary
We have considered all of the arguments and evidence
submitted by applicant and the examining attorney in our
determination of the refusal to register, including any
arguments and evidence not specifically discussed herein.
We have discussed above all of the du Pont factors which
appear relevant thereto, and for which applicant or the
examining attorney has submitted evidence. Lastly, we
observe that to the extent any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. See In re Hyper Shoppes (Ohio), Inc., 837 F.2d
840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s
Ser. No. 85021590
14
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289,
1290 (Fed. Cir. 1984).
Decision: The refusal of registration to the involved
application is affirmed.