The Children’s Inn at NIHv.Vinod Bhandari

Trademark Trial and Appeal Board

Dec 17, 2007

No. 91120549 (T.T.A.B. Dec. 17, 2007)

Hearing: Mailed: 12/17/07
May 22, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

The Children’s Inn at NIH
v.
Vinod Bhandari
_____

Opposition No. 91120549
to application Serial No. 75255103
filed on March 10, 1997
_____

Alan S. Cooper and Alisa C. Key of Howrey LLP for The
Children’s Inn at NIH.

Vinod Bhandari, pro se.
______

Before Quinn, Taylor and Wellington, Administrative
Trademark Judges.

Opinion by Quinn, Administrative Trademark Judge:

Vinod Bhandari filed an application to register the
mark KIDS INN (“INN” disclaimed) for “hotel and motel
services; [and] restaurant services” in International Class
42.1
The Children’s Inn at NIH (National Institutes of
Health) opposed registration based on likelihood of

1 Application Serial No. 75255103, filed March 10, 1997, alleging
a bona fide intention to use the mark in commerce.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Opposition No. 91120549
2
confusion under Section 2(d) of the Trademark Act, 15 U.S.C.
§1052(d). Opposer alleges that applicant’s mark, if used in
connection with applicant’s services, would so resemble
opposer’s previously used and registered mark CHILDREN’S INN
(“INN” disclaimed) for “lodging services for use of children
and their families who are patients at NIH” in International
Class 42,2 as to be likely to cause confusion. Opposer also
alleges that applicant’s mark would cause dilution of the
distinctive quality of opposer’s mark.3
Applicant, in his answer, denied the salient
allegations of likelihood of confusion and dilution.
The record consists of the pleadings; the file of the
involved application; trial testimony of Randolph Schools,
president of the recreation and welfare association at NIH,
with related exhibits, taken by opposer; a status and title
copy of opposer’s pleaded Registration No. 2034869,
applicant’s responses to certain interrogatories and
requests for admission, and excerpts from printed
publications, all introduced by way of opposer’s notices of
reliance; and excerpts from printed publications, a copy of
a prior Board decision involving the opposed application,

2 Registration No. 2034869, issued February 4, 1997; cancelled
(see infra).
3 Although the Board denied opposer’s motion to amend the notice
of opposition to assert a claim of mere descriptiveness, opposer
did amend the opposition, pursuant to an earlier Board order, to
set forth a legally sufficient dilution claim, alleging that its
Opposition No. 91120549
3
and third-party registrations made of record through
applicant’s notices of reliance. Both parties filed
briefs,4 and both appeared at an oral hearing held before
the Board.
The parties have raised evidentiary objections in their
respective briefs. Opposer’s objections go the relevancy
and probative value of certain documents introduced by
applicant. (Brief, pp. 3-5) We will consider these
objections when weighing the probative value to be accorded
to this evidence. Applicant’s objections essentially go to
opposer’s characterization in its brief of what the evidence
establishes. (Brief, pp. 3-5) Suffice it to say, our
decision on the merits rests on our view of what the record
establishes, and not on what opposer contends that the
record establishes.
Lastly, opposer, in its reply brief, objects to
evidence that applicant submitted for the first time with
his brief. The objection is sustained. Exhibits and other
evidentiary materials attached to a party’s brief on the

mark became famous before the filing date of applicant’s
application.
4 To the extent that applicant attempted to raise a laches
defense for the first time in his brief at final hearing, such
defense was neither pleaded nor tried. More significantly, such
defense is not available in an opposition proceeding. National
Cable Television Association, Inc. v. American Cinema Editors,
Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991) [laches runs
from the time from which action could be taken against the
trademark rights inhering upon registration]. Accordingly, no
consideration has been given to applicant’s allegations relating
thereto.
Opposition No. 91120549
4
case can be given no consideration unless they were properly
made of record during the time for taking testimony. See,
e.g., Maytag Co. v. Luskin’s, Inc., 228 USPQ 747, 748 n.5
(TTAB 1986). See also TBMP §704.05(b) (2d ed. rev. 2004).
Thus, we have declined to consider this improperly submitted
evidence.5
Opposer operates a privately funded lodging facility on
the grounds of the National Institutes of Health (“NIH”)
outside of Washington, D.C. The idea for such a facility
dates back to 1983 when a group envisioned one to serve
families whose children were undergoing treatment at NIH.
The vision was for a home-like residence, allowing families
more room than the traditional hotel/motel room. The
residence was designed to keep a family together in the
midst of a family crisis, to reduce stress, and to promote
self-help and mutual support. Between 1987-1989, a fund-
raising organization, Friends of the Children’s Inn, was
formed, and ground breaking on the facility took place in
1988. During this time, fundraising continued through the
use of local television and radio advertisements, and civic
organizations such as the Rotary and Lions clubs contributed
to the effort. A group of Congressional spouses also were
involved, and one of them promoted the facility on The Today
Show in a nationally televised broadcast. Publicity began

5 Even if considered, the evidence does not compel a different
Opposition No. 91120549
5

result on the merits.
Opposition No. 91120549
6
to spread, and opposer started to receive contributions from
around the country. The facility opened with thirty-six
bedrooms in June 1990, marked by a ceremony attended by
President George Bush and First Lady Barbara Bush. Other
dignitaries also attended, and the event garnered national
press coverage. Opposer’s facility has continued to be the
subject of press coverage, with articles referring to
opposer’s CHILDREN’S INN in The Washington Post, USA TODAY
and Parade Magazine. During his time as President, Bill
Clinton broadcast one of his weekly radio addresses from the
facility. Likewise, various news organizations, such as CNN
and Fox News, have broadcast from the facility. The
facility was expanded to fifty-nine rooms in 2004,
continuing to operate as a family-centered residence on the
NIH campus serving pediatric patients and their families
traveling to NIH for treatment.
Opposer annually offers more than 1,300 NIH patients
and their families temporary housing. Opposer utilizes the
following slogan: “When you are sick, there is no place
like home. But if you can’t be home, there is no place like
The Children’s Inn at NIH.” The typical stay ranges from
one to three days, with frequent return trips. The longest
stay has been around nineteen months. There is no charge to
stay at the facility. In addition to bedrooms, the facility
offers common living areas, communal kitchens and dining
Opposition No. 91120549
7
rooms, play rooms, a laundry room, a library, a computer
room, an exercise room, a business center, a playground and
a garden. Opposer offers activities such as bingo, movie
nights, arts and crafts, and birthday parties to enhance
mutual support among families. During fourteen years,
“6,000 seriously ill children and their families have made
almost 40,000 visits to The Inn.” (Schools dep., p. 50).
Guests have come from all fifty states as well as from
fifty-seven foreign countries. Opposer employs a staff of
twenty-five, and depends on a volunteer staff of
approximately 285.
Opposer operates a website (under the domain names
www.childrensinn.com; www.childrensinn.net; and
www.childrensinn.org) featuring information about opposer’s
facility. The mark appears throughout the website.
Opposer is a private, non-profit, charitable entity,
which relies on contributions to fund its operations. Since
the opening of the facility, opposer has attracted financial
contributions from a wide range of corporations, including
Microsoft, Intel, General Electric, Bristol-Myers Squibb and
The Walt Disney Company. Donors have sponsored advertising
for opposer in national publications.
Opposer distributes a newsletter titled “The Children’s
Inn News” to donors and corporations in an effort to
publicize opposer’s facility. In 2003, opposer received
Opposition No. 91120549
8
approximately $4.7 million in contributions. Between 2000-
2004, opposer spent about $2.4 million on its fundraising
efforts.
Applicant has not commenced use of his mark. Although
applicant, in his brief, made statements regarding his
business plans, there is no evidence to support these
statements. Accordingly, these statements have no
evidentiary value. TBMP §704.06(b)(2d ed. rev. 2004).
Insofar as standing is concerned, the record clearly
establishes that opposer is not an intermeddler. Opposer’s
use of its mark establishes that opposer has a legitimate
personal interest in the opposition, and a reasonable basis
for its belief of damage. Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
As to priority, opposer introduced during its testimony
period its Registration No. 2034869, issued February 4,
1997, of the mark CHILDREN’S INN (“INN” disclaimed) for
“lodging services for use of children and their families who
are patients at NIH.” The registration indicates that it
issued pursuant to the benefits of Section 2(f). The status
and title copy of record is dated January 12, 2005. A check
of Office records reveals, however, that this registration
was cancelled on November 10, 2007 for failure to renew
under Section 9. When a registration owned by a party has
been properly made of record in an inter partes proceeding,
Opposition No. 91120549
9
and the status of the registration changes between the time
it was made of record and the time the case is decided, the
Board, in deciding the case, will take judicial notice of,
and rely on, the current status of the registration, as
shown by Office records. TBMP §704.03(b)(1)(A) (2d ed. rev.
2004). See Time Warner Entertainment Co. v. Jones, 65
USPQ2d 1650 (TTAB 2002).
Accordingly, the expired registration has no probative
value. Opposer’s expired registration merely constitutes
evidence that the registration issued. See, e.g., Sunnen
Products Co. v. Sunex International Inc., 1 USPQ2d 1744,
1747 (TTAB 1987). Further, any benefits conferred by the
registration, including the evidentiary presumptions
afforded by Section 7(b) of the Trademark Act, were lost
when the registration expired. See Anderson, Clayton & Co.
v. Krier, 478 F.2d 1246, 178 USPQ 46, 47 (CCPA 1973). Cf.
King Candy Co. v. Eunice King’s Kitchen, 496 F.2d 1400, 182
USPQ 108 (CCPA 1974) [when opposer establishes that it owns
a valid and subsisting registration of its pleaded mark, the
issue of priority does not arise]. Opposer’s case rests,
therefore, on the common law rights established by the
evidentiary record.
The record establishes opposer’s use of its mark
CHILDREN’S INN prior to the earliest date upon which
applicant may rely, that is, the filing date of the involved
Opposition No. 91120549
10
application (March 10, 1997). As noted earlier, however,
the now-expired registration issued under the provisions of
Section 2(f), and the word “INN” was disclaimed. Although
applicant has not attacked opposer’s mark as being merely
descriptive,6 an opposer’s mark must be distinctive, if not
inherently, then through use.
Given that opposer’s prior mark was registered under
the provisions of Section 2(f),7 and in view of the commonly
understood meanings of “children’s” and “inn,” we find, for
the purposes of this proceeding, that the mark CHILDREN’S
INN, for lodging services for the use of children and their
families while being patients at NIH, is merely descriptive.
Thus, the operative inquiry is whether opposer’s mark
acquired distinctiveness prior to applicant’s filing date.
See Perma Ceram Enterprises Inc. v. Preco Industries Ltd.,
23 USPQ2d 1134, 1138 (TTAB 1992). To reiterate, applicant
neither contested opposer’s priority nor has it attacked
opposer’s mark on the basis that it lacks distinctiveness,
either inherent or acquired. Because the record shows

6 In saying this we realize, of course, that at the time of trial
opposer owned a valid and subsisting registration that was over
five years old; thus, the registration was not subject to attack
on the ground of mere descriptiveness. Applicant, in his brief,
stated that opposer’s priority “is not questionable.” (Brief, p.
5).
7 A claim of distinctiveness under Section 2(f) may be construed
as a concession that the matter to which it pertains is not
inherently distinctive. See Yamaha International Corp. v.
Hoshino Gakki Co. Ltd., 840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir.
1988). See also TMEP §1212.02(b) (2007).
Opposition No. 91120549
11
acquired distinctiveness prior to the filing of the involved
application, and since opposer’s priority was not
questioned, we find that opposer has priority.
We now turn to the issue of likelihood of confusion.
Our determination under Section 2(d) is based on an analysis
of all of the facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue. In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973). Opposer must establish that there is a
likelihood of confusion by a preponderance of the evidence.
The relevant du Pont factors in the proceeding now before us
are discussed below.
We first turn to consider the similarity between the
parties’ services. We note at the outset that applicant
“admits there are some similarit[ies] between the services
in question.” (Request for Admissions response no. 4).8
Applicant’s services, as identified in the application, are
“hotel and motel services, [and] restaurant services.”
Normally, when an opposer owns a registration, we consider
the identification of goods and/or services as identified in
the pleaded registration. In this case, however, because
opposer must rely on its common law rights, we consider the

8 Applicant appears to backtrack from this statement when he says
in his brief that the services “are not related in any meaningful
way.” (Brief, p. 25). Nonetheless, the record, rather than
statements in briefs, controls our determination.
Opposition No. 91120549
12
specific services with which the mark is used. Given the
proofs, this distinction is of no moment in the present
case, as opposer’s common law rights are the same as the
rights reflected in the identification of services in the
now-expired registration.
The record establishes that opposer uses its mark in
connection with lodging services for use of children and
their families who are patients at NIH. Thus, these
specific services will be compared with applicant’s hotel,
motel and restaurant services.
Applicant’s identification of services is broadly
worded and, as such, we must assume that applicant’s hotel
and motel services encompass all types of these services.
These services would necessarily include offering lodging to
families that travel to Maryland for treatment at NIH. As
broadly worded, applicant’s services may be rendered to the
same classes of consumers as opposer’s services. These
consumers would include ordinary consumers who would
exercise nothing more than ordinary care in making their
decisions regarding nearby lodging in connection with a
family’s visit to NIH.
With respect to the involved marks, we examine the
similarities and dissimilarities of the marks in their
appearance, sound, meaning, and commercial impression. Palm
Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee
Opposition No. 91120549
13
En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir.
2005). The test 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
their entireties 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. Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106 (TTAB 1975).
To state the obvious, the terms “children’s” and
“kid’s” convey identical meanings. The terms “child” and
kid” (or, for that matter, “children” and “kids”) are
synonyms, and are used interchangeably in everyday English
language. This fact is clearly established by opposer’s
dictionary and thesaurus evidence. The same generic word
“inn” follows the terms “children’s” or “kid’s” in the
respective marks. Thus, while the marks differ somewhat in
sound and appearance, the marks convey identical meanings,
that is, an inn catering to youngsters. The identity in
meaning is not disputed by applicant. Given this identity
in meaning, we find that the marks engender the same overall
commercial impression when used in connection with lodging
services. The identities in meaning and commercial
impression outweigh the differences in sound and appearance.
Opposition No. 91120549
14
See Kenner Parker Toys, Inc. v. Rose Art Industries, Inc.,
963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992) [PLAY-DOH and
FUN DOUGH held confusingly similar in part because PLAY and
FUN “convey a very similar impression”]. See also Hancock
v. American Steel & Wire Co., 203 F.2d 737, 97 USPQ 330
(CCPA 1953) [TORNADO and CYCLONE mean the same thing to the
ordinary consumer’s mind].
Inasmuch as opposer introduced evidence bearing on the
fame of its marks, we now turn to consider this du Pont
factor. Fame of the prior mark plays a dominant role in
likelihood of confusion cases featuring a famous mark. Bose
Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d
1303 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214 F.3d
1322, 54 USPQ2d 1894 (Fed. Cir. 2000); and Kenner Parker
Toys, Inc. v. Rose Art Industries, Inc., supra. Fame for
likelihood of confusion purposes arises “as long as a
significant portion of the relevant consuming
public...recognizes the mark as a source indicator.” Palm
Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee
En 1772, 73 USPQ2d at 1694. The relevant consuming public
herein comprises the general public.
The record includes testimony and evidence bearing on
the publicity surrounding the CHILDREN’S INN, a mark that
opposer has used for almost twenty years. In addition to
opposer’s own efforts to increase public recognition,
Opposition No. 91120549
15
opposer’s facility has received widespread media coverage,
especially upon its opening attended by the President of the
United States. Opposer also has engaged in consistent
fundraising activities in an effort to attract donors.
Opposer’s facility has been mentioned on television and
radio, and in national publications.
The record does not persuade us to bestow the exalted
status of “famous” on opposer’s mark. Nevertheless, we
recognize that opposer’s mark has garnered a degree of
notoriety over two decades of use. Thus, we find that
opposer’s mark possesses a degree of strength with a
corresponding scope of protection that encompasses
applicant’s similar mark for similar services. While the du
Pont factor of the strength of the CHILDREN’S INN mark
favors opposer, it does not do so to the extent that it
would if the mark truly enjoyed extensive public recognition
as a famous mark.
Applicant submitted evidence of two third-party uses of
“Children’s Inn,” one being the name of a domestic abuse
shelter in North Dakota, and the other being the name of a
daycare facility in North Carolina. These uses have no
impact on the degree of distinctiveness of opposer’s mark.
Firstly, the uses are in connection with services different
from the types involved herein. Secondly, there is no
evidence bearing on the extent of use of these names by the
Opposition No. 91120549
16
third parties. That is to say, there is no information
concerning actual revenues under the names or that the
public is familiar with such names. Accordingly, the
evidence does nothing to diminish the distinctiveness of
opposer’s mark.
Applicant also introduced six third-party registrations
of marks that include the term “INN” (“INN” disclaimed) for
hotel, motel and restaurant services; two registrations of
marks that include the term “FAMILY” for similar services;
and four registrations of marks that include the term
“CHILDREN’S” (or “CHILDREN”) or “KIDS” for daycare or
counseling services. As often stated, third-party
registrations are not evidence of use of the marks shown
therein, or that consumers have been exposed to them. AMF
Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177
USPQ 268 (CCPA 1973). Thus, while we have considered the
third-party registrations to the extent that they act like a
dictionary definition showing that a term has a normally
understood meaning, they are of limited probative value in
deciding this case. Red Carpet Corp. v. Johnstown American
Enterprises Inc., 7 USPQ2d 1404, 1406 (TTAB 1988).
Moreover, this evidence has virtually no effect on the level
of distinctiveness of opposer’s mark.
In reaching our conclusion, we are aware, of course, of
the result reached in the ex parte appeal involving the
Opposition No. 91120549
17
present application. In that appeal, the examining attorney
refused registration of the present application under
Section 2(d) based on opposer’s pleaded registration. The
Board concluded that “although there is herein a potential
of overlapping lodging services in a legal sense, given the
overall differences in these highly suggestive marks and the
restrictions placed on registrant’s services, we find the
chance of confusion in the actual marketplace to be de
minimis.” Thus, the Board reversed the Section 2(d)
refusal.
Each case must be decided on its own merits and on the
basis of the facts of record. Generally a decision in an ex
parte appeal is based on a smaller record than in the case
of an inter partes decision. The present situation is no
exception. Suffice it to say, there are additional facts of
record in the present case, particularly with respect to the
notoriety of opposer’s mark, that were not of record in the
ex parte appeal. Moreover, the earlier ex parte appeal
decision was marked “not citable as precedent” and,
accordingly, this panel is not bound by it. While we have
considered the Board’s earlier decision, we have found that
additional facts introduced by opposer provide a more
complete record upon which to make a decision on the
likelihood of confusion. These additional facts compel a
different result from the one reached earlier.
Opposition No. 91120549
18
We have carefully considered all of the evidence
pertaining to the relevant du Pont factors, as well as all
of the arguments with respect thereto (including any
arguments not specifically discussed in this opinion), and
we conclude that opposer has proven its likelihood of
confusion ground of opposition. Inasmuch as applicant is
seeking a nationwide registration, we must assume, for
purposes of our analysis, that applicant may open a hotel or
motel in close proximity to NIH, and that patients’ families
unable to secure lodging at opposer’s facility would look to
applicant for accommodations. The record shows that when
opposer’s facility is filled to capacity, there are patients
and their families who still require lodging and, thus, will
stay in hotel rooms off the NIH campus. The number of
families “bumped” since 1999 has tripled and, in 2003 alone,
opposer turned away families on 400 occasions. Although
opposer’s expansion has alleviated some “bumping,” the
potential remains.
Given the notoriety of opposer’s mark, and the
similarity in the parties’ marks and services, we conclude
that purchasers familiar with opposer’s lodging services for
use of children and their families who are patients at NIH
under the mark CHILDREN’S INN would be likely to believe,
upon encountering applicant’s mark KID’S INN for hotel,
motel and restaurant services, that the services originate
Opposition No. 91120549
19
from or are associated with or are somehow sponsored by the
same source.
Lastly, to the extent that there may be any doubt on
our finding of likelihood of confusion, we resolve that
doubt, as we must, in favor of opposer as the prior user.
See Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d
1565, 218 USPQ 390, 395 (Fed. Cir. 1983).
As noted at the outset of this opinion, opposer also
pleaded dilution. In view of our decision to sustain the
opposition on the ground of likelihood of confusion, it is
not necessary for us to consider opposer’s dilution claim.
In saying this, however, we hasten to add that because we
have already determined that opposer’s mark is not famous
for purposes of likelihood of confusion, and because the
requirement for proving fame for dilution is more stringent
than the requirement for proving fame for likelihood of
confusion, opposer’s dilution claim, based on the present
record, would fail. NASDAQ Stock Market Inc. v. Antarctica
S.r.l., 69 USPQ2d 1718 (TTAB 2003); and Toro v. ToroHead
Inc., 61 USPQ2d 1164 (TTAB 2001).
Decision: The opposition is sustained on the ground of
likelihood of confusion, and registration to applicant is
refused.