Maisti, S.L.

Trademark Trial and Appeal Board

Jul 15, 2009

No. 77247794 (T.T.A.B. Jul. 15, 2009)

Mailed: July 15, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Maisti, S.L.
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Serial No. 77247794
_______

Arturo Perez-Guerrero of Law Offices of Arturo Perez-
Guerrero for Maisti, S.L.

Sara N. Benjamin, Trademark Examining Attorney, Law Office
110 (Chris A. F. Pedersen, Managing Attorney).1
_______

Before Bucher, Kuhlke and Cataldo,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:

An application was filed by Maisti, S.L. to register
the mark shown below on the Principal Register for
“restaurant services, providing temporary accommodations”
in International Class 43.2

1 The involved application was originally examined by another
examining attorney, but was subsequently reassigned to the
attorney whose name is shown above.
2 Application Serial No. 77247794 was filed on August 6, 2007,
based upon applicant’s assertion of a bona fide intent to use the
mark in commerce. Applicant submitted the following statements:
“Color is not claimed as a feature of the mark;” and “The mark
consists of a ‘pound sign’ over whose upper horizontal line
appear the words ‘DESIGNHOTELSCOLLECTION#’.” In addition, the
THIS OPINION IS NOT A
PRECEDENT OF
THE T.T.A.B.
Ser No. 77247794
2

The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as used in connection with its services,
so resembles the following marks, previously registered to
the same entity on the Principal Register: DESIGN HOTELS
in typed or standard character form for “hotels, motels,
resort inns, and restaurant services” in International
Class 42,3 and the mark shown below

application originally recited additional services in Class 35
that are not subject to the instant refusal to register. These
services were divided into child application Serial No. 77976950.
3 Registration No. 2764645 issued on September 16, 2003 with a
disclaimer of HOTELS.
Ser No. 77247794
3

for “printed matter, namely, travel books, product guides,
journals, hotel directories, booklets, books in the field
of architecture and design” in International Class 16 and
“hotels, motels, resort inns and restaurant services;
making hotel reservations for others; arranging temporary
housing accommodations” in International Class 43,4 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

4 Registration No. 3159293 issued on October 17, 2006 with a
disclaimer of DESIGN HOTELS.
Ser No. 77247794
4
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 27 (CCPA
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
Purchasers5

We begin by observing that applicant’s services,
identified as “restaurant services; providing temporary
accommodations,” are identical in part to the services
identified in both cited registrations inasmuch as all
three recite “restaurant services.” We further observe
that applicant’s “providing temporary accommodations” are
essentially identical to “arranging temporary housing
accommodations” as recited in Registration No. 3159293. In
addition, we hereby take judicial notice of the following
definitions:6
Hotel – a commercial establishment offering
lodging to travelers and sometimes to permanent
residents, and often having restaurants, meeting

5 We note that the examining attorney did not base her Section
2(d) refusal to register upon the Class 16 goods recited in
Registration No. 3159293.
6 The Board may take judicial notice of dictionary definitions,
including online dictionaries which exist in printed format. See
In re CyberFinancial.Net Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB
2002). See also University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser No. 77247794
5
rooms, stores, etc. that are available to the
general public;7

Motel – a hotel providing travelers with lodging
and free parking facilities, typically a roadside
hotel having rooms adjacent to an outside parking
area or an urban hotel offering parking within
the building;8

Inn – a commercial establishment that provides
lodging, food, etc., for the public, esp.
travelers, small hotel;9 and

Accommodations – lodging, food and lodging.10

Based upon the above definitions, we find that applicant’s
services identified as “providing temporary accommodations”
are closely related to the “hotels, motels, resort inns”
recited in Registration No. 2764645 inasmuch as both are
concerned with providing lodging, usually temporary, for
travelers and other guests.
In view of the above, we find that applicant’s
services are identical to the services recited in cited
Registration No. 3159293; and further are identical in part
and otherwise closely related to the services identified in
cited Registration No. 2764645.
In addition, neither applicant’s nor registrant’s
recitation of services contains any limitations regarding

7 Random House Dictionary, Random House, Inc. (2009).
8 Id.
9 Id.
10 Id.

Ser No. 77247794
6
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. See In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). 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.).
Finally, we note that applicant does not argue in its
brief that the services, channels of trade or classes of
purchasers are dissimilar. Accordingly, these du Pont
factors all favor a finding of likelihood of confusion.
The Marks
In its briefing of the issue under appeal, applicant
focuses its arguments exclusively on various aspects of the
similarity or dissimilarity between its mark and the marks
in the cited registrations. We turn then to the first
du Pont factor, i.e., whether applicant’s mark and
registrant’s marks 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,
Ser No. 77247794
7
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 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).
Ser No. 77247794
8
In this case, applicant’s mark, as displayed below,
consists of the wording DESIGNHOTELSCOLLECTION# within the
design of a pound sign.

To state the obvious, the pound sign design is the largest
feature of applicant’s mark. However, the size of the
design does not dictate a finding that it is the dominant
feature of applicant’s mark. This is because purchasers of
applicant’s services are more likely to request such
services using the wording DESIGNHOTELSCOLLECTION# than the
design. Thus, DESIGNHOTELSCOLLECTION#, though displayed in
smaller size than the pound sign design, nonetheless is a
dominant, distinguishing feature of applicant’s mark. It
is settled that if a mark comprises both a word and a
design, then the word is normally accorded greater weight
Ser No. 77247794
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because it would be used by purchasers to request the goods
or services. See In re Appetito Provisions Co., 3 USPQ2d
1553 (TTAB 1987).
The mark in cited Registration No. 2764645, DESIGN
HOTELS, is fully incorporated in applicant’s mark,
DESIGNHOTELSCOLLECTION# and design. Thus, a substantial
portion of the wording in applicant’s mark consists of the
entirety of registrant’s mark. Likelihood of confusion is
often found where the entirety of one mark is incorporated
within another. See In re Denisi, 225 USPQ 624, 626 (TTAB
1985)(PERRY’S PIZZA for restaurant services specializing in
pizza and PERRY’S for restaurant and bar services); Johnson
Publishing Co. v. International Development Ltd., 221 USPQ
155, 156 (TTAB 1982)(EBONY for cosmetics and EBONY DRUM for
hairdressing and conditioner); and In re South Bend Toy
Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB
1983)(LIL’ LADY BUGGY for toy doll carriages and LITTLE
LADY for doll clothing).
Furthermore, we note that DESIGN HOTELS, the wording
which the marks share in common, also encompasses the first
words in applicant’s mark. 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
Ser No. 77247794
10
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
highly likely that applicant and its services are referred
to as “Design Hotels.” 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 habit
of shortening full names – from haste or laziness or just
economy of words”].
The fact that “HOTELS” is disclaimed in registrant’s
mark does not serve to diminish the similarities between
the marks. As the wording of the disclaimer indicates
(i.e., “no claim is made to the exclusive use of … apart
from the mark as shown” – emphasis added), the disclaimed
matter is accorded significance as an integral part of the
composite mark. See American Dietaids Company, Inc. et.
al. v. Plus Products, 191 USPQ 146 (DCNY 1976). The
disclaimer of matter in a mark does not have the effect of
removing the matter from the mark. See Bordon, Inc. v.
Ser No. 77247794
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W.R. Grace & Co., 180 USPQ 157 (TTAB 1973). It is well
established that a disclaimer is of no legal significance
in determining likelihood of confusion, rather, the
disclaimed matter must be considered. See Kellogg Co. v.
Pack “Em Enterprises Inc., 14 USPQ 2d 1545 (TTAB 1990); and
Glamorene Products Corporation v. Boyle-Midway, Inc., et.
al., 188 USPQ 145 (DCSDNY 1975). Moreover, the public
viewing the mark is unaware of what, if any, portions of a
mark may be disclaimed in a federal registration. See In
re National Data Corp., 224 USPQ 749 (Fed. Cir. 1985). We
note in that regard that applicant has not disclaimed any
of the wording in its mark, although it offered to disclaim
DESIGN and HOTELS during prosecution of its involved
application. In accordance with the above discussion, a
disclaimer of this wording would not serve to avoid
confusion. See Cancer Care, Inc. v. American Family Life
Assurance Company of Columbus, 211 USPQ 1005 (TTAB 1981).
Finally, applicant refers in its brief to third-party
Registration No. 3163716 and argues this registration
illustrates that a mark similar to those in the cited
registrations was allowed to exist for identical services.
However, applicant did not make a copy of this registration
of record during prosecution of its involved application.
To make third-party registrations of record, applicant must
Ser No. 77247794
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submit a copy of the registration or a printout from the
USPTO’s electronic database prior to the briefing stage of
the case. See, for example, In re Duofold, Inc., 184 USPQ
638, 640 (TTAB 1974). In consequence thereof, there is no
evidence of record that the marks in either cited
registration or the terms comprising such marks are weak or
otherwise entitled only to a narrow scope of protection.
In view of the foregoing, we find that consumers who
are familiar with the mark, DESIGN HOTELS, used in
connection with registrant’s services, and then see the
mark DESIGNHOTELSCOLLECTION# and design used in connection
with applicant’s services which are identical in part, are
likely to assume that the owner of the mark DESIGN HOTELS
has simply added COLLECTION# and the design of a pound sign
to its mark. In other words, consumers are likely to view
the marks as variations of each other, but indicating a
single source. Thus, despite the fact that applicant’s
mark includes the word COLLECTION# and design, its mark and
the registered mark DESIGN HOTELS, 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 as to
Registration No. 2764645.
Ser No. 77247794
13
Based upon the same analysis, we find that the mark in
cited Registration No. 3159293, displayed below,

is highly similar to the mark in the involved application.
The word portion of registrant’s mark, i.e., DESIGN HOTELS,
is again incorporated in its entirety in applicant’s mark
DESIGNHOTELSCOLLECTION# and design. For the reasons
discussed above, the fact that the wording DESIGN HOTELS in
registrant’s mark is disclaimed does not diminish the
significance of such wording for purposes of our likelihood
of confusion analysis. See Kellogg Co. v. Pack “Em
Enterprises Inc., 14 USPQ2d at 1549. Furthermore, the
design element in registrant’s mark is visually less
prominent than the wording therein, and contributes less to
the overall commercial impression of the mark. See In re
Appetito Provisions Co., 3 USPQ2d at 1554.
We find, therefore, that when viewed as a whole,
applicant’s mark and the mark in Registration No. 3159293
are sufficiently similar in appearance, sound, connotation
and commercial impression that especially when used in
connection with identical services, confusion is likely to
occur. See Century 21 Real Estate Corp. v. Century Life of
America, 23 USPQ2d at 1701.
Ser No. 77247794
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Lastly, to the extent that 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
Famous Pastry Shoppe, Inc., 748 F.2d 165, 223 USPQ 1289
(Fed. Cir. 1984).
Decision: The refusal of registration to the involved
application is affirmed as to the marks in both
Registration No. 2764645 and Registration No. 3159293.