Saint Paul Civic Center Authority

Trademark Trial and Appeal Board

Sep 8, 2000

No. 75330058 (T.T.A.B. Sep. 8, 2000)

Paper No. 13
DEB
9/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Saint Paul Civic Center Authority
________
Serial No. 75/330,058
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Kurt J. Niederluecke of Briggs and Morgan, P.A. for Saint
Paul Civic Center Authority.
Mary J. Rossman, Trademark Examining Attorney, Law Office
109 (Ronald R. Sussman, Managing Attorney).
_______
Before Seeherman, Bucher and Rogers, Administrative
Trademark Judges.
Opinion by Bucher, Administrative Trademark Judge:
Saint Paul Civic Center Authority, a statutory agency
of the City of Saint Paul, Minnesota, has appealed from the
refusal of the Trademark Examining Attorney to register the
mark “RIVERCENTRE” as a service mark for “providing general
purpose facilities for entertainment in the nature of
sporting events and live musical performances, conferences,
exhibitions, trade and consumer shows, and festivals
featuring a variety of athletic, educational, cultural
activities and the like” in International Class 41, as a
service mark for “providing general purpose facilities for
conventions, and concession stands featuring food and
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Serial Number 75/330,058
2
souvenirs” in International Class 42, as a trademark for
“clothing, namely, shorts, sweat pants, sweat shirts, T-
shirts, blazers and scarves; and headgear, namely, hats,
caps, bandannas, neck, head and sweat bands, and sun
visors,” in International Class 25, and as a trademark for
“ornamental novelty buttons and pins, and embroidered
emblems” in International Class 26.1
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles two registered marks, owned
by the same entity, that applicant’s use of its mark on its
identified goods and services is likely to cause confusion,
to cause mistake, or to deceive. The cited marks, as shown
below, are registered for services identified as “leasing
and management of shopping centers, office buildings and
other commercial real estate,” in Int. Class 36:
2
and

1 Serial No. 75/330,058 filed on July 24, 1997, based upon
applicant’s allegation of a bona fide intention to use the mark
in commerce.
2 Registration Number 1,481,052 issued on March 15, 1988,
with “Keystone” listed as the last owner of record; §8 affidavit
accepted and §15 affidavit received.
Serial Number 75/330,058
3
3
Both applicant and the Examining Attorney filed
briefs; an oral hearing was not requested.
Our determination under Section 2(d) of the Act is
based upon an analysis of all of the probative facts in
evidence that are relevant to the factors bearing on the
issue of likelihood of confusion. See In re E. I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973).
In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Turning first to the marks, applicant does not contest
the conclusion of the Trademark Examining Attorney that the
marks are substantially identical. We agree: even the
most careful of consumers may well overlook the very minor
difference in the reversal of the final two letters of the

3 Registration Number 1,481,053 issued on March 15, 1988,
again having “Keystone” listed as the last owner of record; §8
affidavit accepted and §15 affidavit received.
Serial Number 75/330,058
4
mark -- “…center” versus “…centre.” Furthermore, there is
no evidence of third parties having adopted and used either
spelling of this matter for any related goods or services.
Accordingly, on this record, we must assume “RIVERCENTER”
(or “RIVERCENTRE”) is a relatively strong service mark.
We turn next to the relationship between the
identified services of registrant and applicant.
Registrant’s registrations are for the activities of
leasing and managing commercial real estate. Applicant’s
identified services involve providing general-purpose
facilities for entertainment and for conventions. The
Trademark Examining Attorney has introduced use-based,
third-party registrations demonstrating that some
enterprises which provide leasing and management services
for commercial space also provide general-purpose
facilities for entertainment and for conventions.4 Although
these registrations are not evidence that the different
marks shown therein are in use or that the public is
familiar with them, they nevertheless have probative value
to the extent that they serve to suggest that the services
listed therein (which are the same types of services
involved herein) are of a kind which may emanate from a
Serial Number 75/330,058
5
single source. Accord In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
These third-party registrations are sufficient to
demonstrate a relationship between the services, as a
result of which the marketing of the applicant’s and
registrant’s identified services under substantially
identical marks is likely to cause consumers to believe
that the services emanate from a common enterprise.
Applicant attempts to distinguish its services from
that of the registrant, arguing that we must limit
registrant to commercial leases for long term occupancy of
retail spaces, while applicant will be contracting with
associations for the use of a large, multi-purpose complex
having facilities for special entertainment events and
short term services, often for merely a day or so at a
time.
Notwithstanding these arguments, there is sufficient
evidence in the file that the dividing line between these
respective services is not as clear as applicant would have
us believe. For example, as to the size of the venues,
applicant’s own brochure touts its facilities for “intimate

4 We refer especially to registrations for “PIER 39,”
“WELCOME TO THE WORLLD,” “OLD WAIKIKI,” “THE APOLLO OF TEMPLE,”
Serial Number 75/330,058
6
gatherings for business and private celebrations.”5 With
regard to the asserted “short term” leases, applicant’s
literature shows that the “Minnesota Wild,” a new NHL
franchise, will begin to play hockey in the new sports
arena this season. The literature also states that
additional food concession outlets will be located through
the new sports arena. These arrangements, in particular,
would involve long-term leases.
Moreover, it is well established that it is not
necessary that the services of the parties be competitive
to support a holding of likelihood of confusion. It is
sufficient that the respective services of the parties are
related in some manner, and/or that the conditions and
activities surrounding the marketing of the services are
such 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 service provider. In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978). Herein, not only are registrant and

and “SEAPORT BOSTON.”
5 This application is an intent to use application on which
an allegation of use has not yet been filed. Applicant’s
promotional literature shows there was an official grand opening
in May 1998 for the Convention Center and the Roy Wilkins
Auditorium, while the new sports arena should be completed soon.
Serial Number 75/330,058
7
applicant both involved in providing space for commercial
enterprises, but the third-party registrations show that
the services identified in applicant’s application and the
cited registration can emanate from the same source under
the same mark.
While we have concluded that these services are
related, we have given no weight to the LEXIS/NEXIS® evidence
introduced by the Trademark Examining Attorney in which the
word “Rivercenter” is used to refer to a myriad of events
along the Riverwalk in San Antonio, Texas. In reviewing
these stories, we agree with applicant that these entries
often reflect third-party usage in a geographically
descriptive manner rather than as a source indicator for
registrant’s commercial real estate services. To the
extent that these stories reflect the activities of a
variety of tenants in a certain location, they are
irrelevant to a determination of relatedness of the
services involved herein.
Finally, when deciding the conditions under which, and
buyers to whom, sales are made, both services are directed
toward careful, sophisticated purchasers. This is a factor
favoring applicant. Nonetheless, given that these two
marks are substantially identical, and given the
relatedness of the services, as discussed above, even
Serial Number 75/330,058
8
sophisticated purchasers might be confused under these
circumstances. Accordingly, we find that applicant’s use
of its applied-for mark on the services listed in
International Classes 41 and 42 is likely to cause
confusion with registrant’s mark for its identified
services.
We are also faced with the issue of likelihood of
confusion between applicant’s goods -- clothing, namely,
shorts, sweat pants, sweat shirts, T-shirts, blazers and
scarves; and headgear, namely, hats, caps, bandannas, neck,
head and sweat bands, and sun visors, as well as for
ornamental novelty buttons and pins, and embroidered
emblems -- and registrant’s leasing and management
services. By definition, the apparel and novelty items
listed above are sold to ordinary members of the general
public. As contrasted with the professionals involved in
making commercial leasing decisions in connection with
applicant’s services, we find no overlap in the customers
or in the channels of trade between applicant’s goods and
the registrant’s services. As to the Trademark Examining
Attorney’s argument that these goods should be considered
ancillary goods to registrant’s services, we reject this
contention as well. The Trademark Examining Attorney has
not submitted any evidence herein that companies which
Serial Number 75/330,058
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lease and manage shopping centers, office buildings and
other commercial real estate have become a “secondary
source” for clothing and accessories bearing their service
marks.
Decision: The refusal to register is affirmed as to
the services in International Classes 41 and 42, but
reversed as to the goods in International Classes 25 and
26.
E. J. Seeherman
D. E. Bucher
G. F. Rogers
Administrative Trademark
Judges, Trademark Trial and
Appeal Board