Raju M. Patel and Tara Raju Patel

Trademark Trial and Appeal Board

Jul 17, 2020

87696532 (T.T.A.B. Jul. 17, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 17, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Raju M. Patel and Tara Raju Patel
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Serial No. 87696532
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Tommy SF Wang of Wang IP Law Group, P.C.,
for Raju M. Patel and Tara Raju Patel.
Lyal L. Fox III, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Cataldo, Pologeorgis, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:
Raju M. Patel and Tara Raju Patel (“Applicants”) seek registration on the
Principal Register of the standard character mark STARLIGHT INN (INN
disclaimed) for “hotel services; motel services; bed and breakfast inn services,” in
International Class 43.1

1 Application Serial No. 87696532 was filed on November 24, 2017 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on Applicants’ claim of first use of the mark
anywhere and first use of the mark in commerce at least as early as January 1, 1997.
Serial No. 87696532
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The Trademark Examining Attorney has refused registration of Applicants’ mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that it
so resembles the registered standard character marks STARLITE for “bar services;
restaurant services,”2 and THE STARLIGHT BALLROOM (BALLROOM disclaimed)
for “providing ballroom facilities in a convention center,”3 as to be likely, when used
in connection with the services identified in the application, to cause confusion, to
cause mistake, or to deceive.
The Examining Attorney originally made final a refusal based only on the cited
mark THE STARLIGHT BALLROOM, and Applicants requested reconsideration and
then appealed. After Applicants filed their appeal brief regarding the cited mark THE
STARLIGHT BALLROOM,4 the Examining Attorney secured remand of the
application to reinstate a refusal based on the STARLITE mark that he had
previously asserted as a bar to registration during prosecution, but had subsequently
withdrawn before issuing the original final refusal. When the Examining Attorney
also made final the reinstated refusal, the appeal was resumed. After Applicants
elected not to file a supplemental appeal brief to address the reinstated refusal, the
Examining Attorney filed a brief discussing both refusals. We affirm the refusal to

2 The cited Registration No. 5191190 issued on April 25, 2017.
3 The cited Registration No. 3284855 issued on August 28, 2007 and has been renewed.
4 Citations in this opinion to the briefs and other filings in the appeal refer to TTABVUE, the
Board’s online docketing system. Turdin v. Tribolite, Ltd., 109 USPQ2d 1473, 1476 n.6 (TTAB
2014). Specifically, the number preceding TTABVUE corresponds to the docket entry
number, and any numbers following TTABVUE refer to the page number(s) of the docket
entry where the cited materials appear.
Serial No. 87696532
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register based on the cited STARLITE mark because Applicants failed to address that
refusal on appeal.
I. Prosecution History and Procedural History of Appeal5
We summarize below the prosecution history of the involved application and the
procedural history of the appeal because they provide necessary background for our
decision.
The Examining Attorney initially refused registration under Section 2(d) on the
basis of both the STARLITE mark and the mark THE STARLIGHT BALLROOM,
and made of record USPTO electronic records regarding the two cited registrations
together with other materials.6 Applicants responded by arguing against the refusal
as to both marks.7 The Examining Attorney then withdrew the refusal based on the
STARLITE mark, but made final the refusal based on the mark THE STARLIGHT
BALLROOM.8
Prior to appealing the final refusal based on the mark THE STARLIGHT
BALLROOM, Applicants filed a Request for Reconsideration.9 Shortly thereafter,
Applicants filed a Notice of Appeal, 1 TTABVUE, which did not indicate that a
Request for Reconsideration was pending. Id. The Board accordingly instituted the

5 Citations in this opinion to the application record are to pages in the Trademark Status &
Document Retrieval (“TSDR”) database of the United States Patent and Trademark Office
(“USPTO”).
6 March 9, 2018 Office Action at TSDR 1-17.
7 September 8, 2018 Response to Office Action at TSDR 2-18.
8 September 11, 2018 Final Office Action at TSDR 1-8.
9 March 6, 2019 Request for Reconsideration at TSDR 1-43.
Serial No. 87696532
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appeal and advised Applicants that their appeal brief was due within 60 days. 2
TTABVUE. Applicants timely filed it. 4 TTABVUE.
Shortly thereafter, the Examining Attorney advised Applicants’ counsel that on
the basis of the Examining Attorney’s review of Applicants’ appeal brief with his
Managing Attorney, the refusal would be withdrawn, and the application would be
approved for publication for opposition, if Applicants amended their identification of
services to delete “hotel services” and “motel services.”10 Applicants’ counsel agreed
to the proposed amendment,11 and the Examining Attorney issued an Examiner’s
Amendment purporting to amend the application by deleting those services and to
obviate the refusal.12 Neither the Examining Attorney nor Applicants notified the
Board of these developments.
About two weeks later, however, the Examining Attorney reversed course and
issued a second Examiner’s Amendment stating as follows:
The applicant [sic] was previously informed that amending
the identification of services would obviate and/or satisfy

10 May 15, 2019 Note to the File containing a May 14, 2019 email from the Examining
Attorney to Applicants’ counsel.
11 May 15, 2019 Note to the File containing a May 14, 2019 email from Applicants’ counsel to
the Examining Attorney.
12 May 15, 2019 Examiner’s Amendment at TSDR 1. “The Board encourages settlement” of
all cases before it, including appeals, TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF
PROCEDURE (“TBMP”) Section 605.01 (June 2020), but the Examining Attorney’s actions
while the appeal was pending were improper. Although an “examining attorney may
withdraw an appealed refusal to register, and approve the involved application for
publication . . . at any time prior to issuance of the Board’s decision in the case,” TBMP
Section 1210, the withdrawal of the refusal here was contingent on the amendment of the
application, and because the appeal was pending at the time of the Examiner’s Amendment,
the Examining Attorney lacked jurisdiction over the application to enter the amendment.
The proper course would have been for the Examining Attorney or Applicants to request a
remand of the application to the Examining Attorney to enter the amendment. See generally
TBMP Section 1205.01.
Serial No. 87696532
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all remaining refusals and requirements with this
application. However, this was not the case. Therefore the
applicant [sic] has elected to revert back to the original
identification of services listed in the application. The
identification of services is amended to read as follows:
Class 043: Hotel services; Motel services; Bed and
breakfast inn services.13
A few days later, the Examining Attorney requested a remand of the application
“to address an issue not involved in the appeal that may render the subject mark
unregistrable.” 6 TTABVUE 2. The request stated that “the Examining Attorney
previously obviated a Section 2(d) Refusal with respect to Registration No. 5191190,
STARLITE,” but that “[t]his refusal should have been maintained and made
FINAL.” Id. at 3 (emphasis in original). The Examining Attorney stated that his
intention on remand was “to reinstate the Section 2(d) Refusal with respect to
Registration No. 5191190, STARLITE.” Id. The Board granted the request,
suspended the appeal, and restored jurisdiction over the application to the Examining
Attorney. 7 TTABVUE 1. The Board’s order noted that if the Examining Attorney
issued another final refusal, “[a]ction on the appeal will then be resumed; and
Applicant will be allowed time in which to file its supplemental brief, if any.” Id.
The Examining Attorney subsequently issued an Office Action on remand
reinstating the Section 2(d) refusal based on the STARLITE mark in Registration No.
5191190, again making of record USPTO electronic records regarding that
registration as well as additional materials.14 Applicants responded by arguing

13 May 30, 2019 Examiner’s Amendment at TSDR 1.
14 June 24, 2019 Office Action at TSDR 1-17.
Serial No. 87696532
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against the reinstated refusal and making of record additional materials pertaining
to the cited mark.15 The Examining Attorney then made the reinstated refusal final,16
making of record additional materials, including third-party registrations of marks
covering both Applicants’ services and the services in the cited STARLITE
registration.17
The Board then resumed the appeal, 10 TTABVUE 1, and allowed Applicants 60
days from the mailing date of the resumption order to file a supplemental appeal brief
if they so desired. Id. When Applicants did not file one, the Board transferred the file
of the application to the Examining Attorney for the filing of his brief. 11 TTABVUE
1. The Examining Attorney timely filed his brief, which addressed both cited marks.
12 TTABVUE. Applicants did not file a reply brief in response to the Examining
Attorney’s brief.
II. Disposition of the Appeal
As noted above, Applicants did not address the STARLITE mark in their appeal
brief because the refusal based on that mark had been withdrawn at the time of
Applicants’ appeal from the final refusal to register. When the refusal based on the
STARLITE mark was reinstated following remand, Applicants addressed the
reinstated refusal in their response to the Examining Attorney’s non-final Office
Action, but after the reinstated refusal was made final and the appeal was resumed,

15 October 29, 2019 Response to Office Action at TSDR 1-25.
16 November 5, 2019 Final Office Action at TSDR 1.
17 Id. at TSDR 2-66.
Serial No. 87696532
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Applicants did not file a supplemental brief to address the cited STARLITE mark.
The Examining Attorney correctly notes in his brief that because “no supplemental
brief was submitted,” Applicants have “not presented any arguments against refusal
based on likelihood of confusion with the mark in Registration No. 5191190,
STARLITE,” and he argues that “it is presumed that [Applicants] concede[ ] that the
marks are confusingly similar and the services are related.” 12 TTABVUE 15.
Applicants also did not file a reply brief to respond to these arguments regarding their
alleged concessions, or otherwise to address the Examining Attorney’s arguments
supporting the reinstated refusal based on the cited STARLITE mark.
“If an applicant, in its appeal brief, does not assert an argument made during
prosecution, it may be deemed waived by the Board.” TBMP Section 1203.02(g).
Applicants’ appeal brief addressed the citation of the mark THE STARLIGHT
BALLROOM that was at issue at the time of the appeal, but the scope of the Section
2(d) refusal at issue on the appeal expanded following remand when the Examining
Attorney reinstated the refusal based on the STARLITE mark and then made the
refusal final as to that mark as well. Although Applicants addressed the reinstated
refusal during prosecution, they did not do so on appeal because they did not file a
supplemental appeal brief after being given the opportunity to do so. We find that
Applicants waived any arguments against the reinstated refusal based on the
STARLITE mark, and we accordingly affirm the refusal to register based on that
citation. See, e.g., In re Katch, LLC, 2019 USPQ2d 233842, *1-2 (TTAB 2019) (Board
affirmed refusals under Sections 1, 2, 3, and 45 of the Trademark Act to register
Serial No. 87696532
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applicant’s mark on the Principal Register where applicant waived any arguments as
to those refusals by addressing in its brief only a refusal under Section 23(c) to
register its mark on the Supplemental Register); In re Rainier Enters., LLC, 2019
USPQ2d 463361, *2-3 (TTAB 2019) (failure to address refusals is a basis for
dismissing an appeal); In re Harley, 119 USPQ2d 1755, 1758 (TTAB 2016) (failure to
address refusals is a basis for affirming the examining attorney’s refusal on all
grounds).
Decision: The refusal to register Applicants’ mark under Section 2(d) of the
Trademark Act as it pertains to the cited mark STARLITE is affirmed. In view
thereof, we need not reach the refusal as it pertains to the cited mark THE
STARLIGHT BALLROOM. See, e.g. Yazhong Inv. Ltd. v. Multi-Media Tech Ventures,
Ltd., 126 USPQ2d 1526, 1540 n.52 (TTAB 2018) (citing Multisorb Tech., Inc. v. Pactiv
Corp., 109 USPQ2d 1170, 1171 (TTAB 2013)).