Trump Taj Mahal Associatesv.Chatam Int’l. Inc.

Trademark Trial and Appeal Board

Oct 30, 2000

No. 91111896 (T.T.A.B. Oct. 30, 2000)

Paper No. 22
TEH
10/30/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Trump Taj Mahal Associates
v.
Chatam International Incorporated
_____
Opposition No. 111,896
to application Serial No. 75/342,541
filed on August 18, 1997
_____
W. Mack Webner of Sughrue, Mion, Zinn, Macpeak & Seas, PLLC
for Trump Taj Mahal Associates.
Arthur H. Seidel of Seidel, Gonda, Lavorgna & Monaco, P.C. for
Chatam International Incorporated.
______
Before Simms, Seeherman and Holtzman, Administrative Trademark
Judges.
Opinion by Holtzman, Administrative Trademark Judge:
An application has been filed by Chatam International
Incorporated to register the mark XANADU for "wines and
distilled spirits."1
Registration has been opposed by Trump Taj Mahal
Associates under Section 2(d) of the Trademark Act. As its

1 Application Serial No. 75/342,541 filed August 18, 1997 alleging a
bona fide intent to use the mark in commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 111,896
2
ground for opposition, opposer asserts priority and likelihood
of confusion under Section 2(d) of the Trademark Act,
contending that applicant's mark when applied to applicant's
goods so resembles opposer's previously used mark XANADU for
its "entertainment services, namely a nightclub and
restaurant" as to be likely to cause confusion. Opposer has
alleged use of its mark for the identified services at least
as early as April 2, 1990 and has also pleaded ownership of a
pending application for that mark in connection with the same
services.
Applicant, in its answer, denies the salient allegations
in the notice of opposition. Applicant also asserted that
opposer's mark is entitled to a limited scope of protection in
view of the suggestive nature of the mark and the third-party
usage of the mark.
The record includes the pleadings; the file of the
involved application; evidence by both parties made of record
by notice of reliance including a status and title copy of the
registration which issued from opposer's pleaded application;
and the testimony with exhibits of opposer's Vice President,
Stephanie Nielson.2 Both parties filed briefs, but an oral
hearing was not requested.

2 Applicant did not attend the deposition of this witness.
Opposition No. 111,896
3
The record shows that opposer operates a nightclub and
restaurant under the mark XANADU at the Trump Taj Mahal Hotel
and Casino in Atlantic City, New Jersey. Applicant is a
bottler and blender of alcoholic beverages, selling its
products to distributors who in turn sell to retail outlets
such as liquor stores, as well as to restaurants, bars and
nightclubs.
Opposer has made of record a status and title copy of the
registration which issued from its pleaded application.3 Thus,
there is no issue with respect to opposer's priority. King
Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974). Applicant has not argued otherwise and,
in any event, the evidence demonstrates opposer's use of
XANADU in connection with restaurant and nightclub services
prior to the August 18, 1997 filing date of defendant's
application which is the earliest date on which defendant is
entitled to rely.
This brings us to the issue of likelihood of confusion.
Our determination under Section 2(d) is based on an analysis
of all of the probative facts in evidence that are relevant to

3 Registration No. 2,177,705 issued August 4, 1998 for the mark XANADU
for "entertainment services, namely, a nightclub and restaurant."
Although the registration was not pleaded in the notice of opposition
inasmuch as it issued after the commencement of this proceeding,
applicant has not objected to opposer's reliance on the registration.
In view thereof, the pleadings are hereby deemed to be amended in
Opposition No. 111,896
4
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). In making this determination, the Board is
mindful that in particular cases, a single du Pont factor may
be dispositive in a likelihood of confusion analysis. See,
e.g., Kellogg Co. v. Pack'em Enterprises, Inc., 951 F.2d 330,
21 USPQ2d 1142 (Fed. Cir. 1991).
We turn first to the parties' respective goods and
services, and we begin by noting that the likelihood of
confusion may result from the use by different parties of the
same or similar marks in connection with goods, on the one
hand, and services which deal with or are related to those
goods, on the other. See In re Mucky Duck Mustard Co. Inc., 6
USPQ2d 1467 (TTAB 1988) and Steelcase Inc. v. Steelcare Inc.,
219 USPQ 433 (TTAB 1983). The question, then, is whether
opposer's nightclub/restaurant services and applicant's wine
and distilled spirits are sufficiently related and/or whether
the circumstances surrounding the marketing of those goods and
services are such that purchasers encountering them would, in
view of the similarity of the marks, mistakenly believe that
the goods and services emanate from the same source. Flow
Technology Inc. v. Picciano, 18 USPQ2d 1970 (TTAB 1991) and
Monsanto Co. v. Enviro-Chem Corp., 199 USPQ 590 (TTAB 1978).

accordance with Fed. R. Civ. P. 15(b) so as to conform to the
Opposition No. 111,896
5
Even if the marks are identical, if these conditions do not
exist, we have held that confusion is not likely to occur.
See, for example, Borg-Warner Chemicals, Inc. v. Helena
Chemical Company, 225 USPQ 222 (TTAB 1983) and Chase Brass &
Copper Co., Incorporated v. Special Springs, Inc., 199 USPQ
243 (TTAB 1978).
We do not find the respective goods and services to be
related. Opposer has introduced evidence that opposer's
XANADU nightclub/restaurant sells at least two brands of
alcoholic beverages produced by applicant under the names
Chambord Liqueur and Devonshire Irish Cream Liqueur. Based on
this evidence, and the fact that nightclubs and restaurants
are normal channels of trade for alcoholic beverages, opposer
asserts that applicant "is likely to want to sell its XANADU
brand distilled spirits to [opposer]." (Opposer's brief,
p.8).
There is no dispute that wines and alcoholic beverages are
commonly served in nightclubs and restaurants in general, and
that such beverages are in fact available to patrons of
opposer's establishment. Thus, the channels of trade and
classes of purchasers for these goods and services may
overlap, but only to the extent that nightclub patrons can
obtain a poured alcoholic beverage or glass of wine to be

evidence.
Opposition No. 111,896
6
consumed on the premises of the nightclub. However,
nightclubs and similar establishments are not normal channels
of trade for bottled wines and packaged distilled spirits
which must, instead, be purchased at a liquor store or some
other retail outlet for those products.
In any event, the fact that particular goods and services
move through the same channels of trade to the same classes of
purchasers does not, in and of itself, establish that such
goods and services are related or that their sale under
similar or even identical marks would be likely to cause
confusion. See Champion International Corporation v. Genova,
Inc., 199 USPQ 301 (TTAB 1978). Products are not
automatically deemed "related" to restaurant services merely
by virtue of the fact that a patron could eat, drink or use
them in a nightclub or restaurant. In a closely analogous
situation, our primary reviewing court has rejected any per se
rule that food products and food services are related merely
by virtue of their complementary use or nature. See Lloyd's
Food Products., Inc. v. Eli's, Inc., 987 F.2d 766, 25 USPQ2d
2027 (Fed. Cir. 1993). To establish a likelihood of confusion
between those products and services, the Court has held that a
party must show "something more" than that similar or even
identical marks are used for these products and services.
Lloyd's Food Products Inc., supra and Jacobs v. International
Opposition No. 111,896
7
Multifoods Corporation, 212 USPQ 641 (CCPA 1982). The element
of "something more" is demonstrated, for example, where the
food item served in the restaurant is of the type which may
typically be packaged for retail sale by the restaurant under
the same name, such as house specialty products.4 See In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). In
the present case, opposer has submitted no evidence whatsoever
to show that restaurants typically, or for that matter, ever
package wine or alcoholic beverages for retail sale under
their own marks; nor has opposer provided any other evidence
which may be probative of consumer perception.
Opposer appears to assert that the mere fact that
applicant's XANADU wine and distilled spirits may be sold in
opposer's nightclub/restaurant will cause the relevant public
to assume there is an association between those goods and
services.5
However, opposer cannot prove the likelihood of confusion by,
in fact, creating that confusion. Thus, we do not find that

4 In the Mucky Duck case, the Board noted that restaurants sometimes
market their house specialties including items such as salad
dressings through retail outlets.
5 Specifically, opposer argues that "[t]he customers of the XANADU
Showroom [sic], the customers of the [sic] Trump's hotel and casino
and the purchasers of distilled beverages who will have heard of
Trump's XANADU Showroom will be likely, upon seeing Applicant's
distilled spirits for sale at the hotel, in the XANADU Showroom or in
liquor stores wherever they may be, are likely to believe that there
Opposition No. 111,896
8
purchasers who come in contact with applicant's wines or
distilled spirits, even if under an identical mark as the
nightclub/restaurant services, would expect the same companies
which operate the nightclubs or restaurants to sell wine or
alcoholic beverages.
We turn then to the marks. It is obvious that the parties
marks are identical. Applicant does not dispute this point
but rather contends that opposer's mark is suggestive and weak
and, thus, entitled only to a narrow scope of protection. To
demonstrate the suggestive nature of the mark and the public's
familiarity with the term, applicant has made of record an
encyclopedia reference describing "Xanadu" as a province or
region in China "mentioned" in Samuel Coleridge's poem, "Kubla
Khan" as the site of Khan's well-known pleasure garden.
Applicant has also submitted a dictionary definition referring
to
"Xanadu" as "a place of great beauty, luxury, and
contentment."6 Applicant has also included passages from the

is an association between Trump and the Applicant when there is
none." (Opposer's brief, p.8).
6 We note that opposer has objected to applicant's notice of reliance
on these materials as well as to the dictionary and encyclopedia
references submitted by applicant on the ground that applicant failed
to comply with Trademark Rule 2.122(e) by stating the relevance of
each of these materials in its notice of reliance. We do not condone
applicant's failure to comply with the rule. However, a procedural
Opposition No. 111,896
9
poem itself as it appears in a dictionary of quotations and
three publications in the nature of movie and video review
guides containing descriptions of a 1980 film entitled
"Xanadu." It can be seen from this evidence that XANADU is
not an arbitrary or fanciful mark in the context of opposer's
services. The evidence shows that when XANADU is used in
connection with a nightclub and restaurant the term is in fact
suggestive of the environment or ambiance for those services.
However, applicant's claim of "enormous third party usage"
of XANADU for restaurants and/or related products must fail.
Applicant has submitted evidence consisting of summaries
obtained
from a private search company of twelve third-party
registrations and two (abandoned) applications which comprise
the term "XANADU," a listing of 72 business names
incorporating "Xanadu" taken from the Dialog database, and a
listing of 14 businesses obtained from a Dun & Bradstreet
report. Opposer has objected to the admissibility of these

objection of this nature to a notice or reliance should have been
raised promptly, preferably by motion to strike since this ground for
the objection is, contrary to opposer's claim, one which could have
been cured if raised in a prompt manner. See Weyerhaeuser Co. v.
Katz, 24 USPQ2d 1230 (TTAB 1992) and generally TBMP § 718.02(b).
Accordingly, this objection is overruled and we will consider the
materials submitted with the notice of reliance as part of the
record. In any event, it is obvious that by this evidence applicant
is attempting to show the suggestive meaning of the term "Xanadu."
Opposition No. 111,896
10
materials on the basis that they have not been properly
introduced in evidence.7
Opposer's objections to these materials are well taken.8
The summaries of third-party registrations and applications
provided by applicant are inadmissible. They obviously do not
constitute official records within the meaning of Trademark
Rule 2.l22(e) since they were obtained from a private search
company;

7 In addition, applicant has improperly relied on Lloyd's Food
Products., Inc. v. Eli's, Inc., supra, to support its position that
the Dialog and Dun & Bradstreet evidence is probative of third-party
use. Unlike telephone or advertising directories, neither the Dialog
listing of business names nor trade materials such as the Dun &
Bradstreet report are directed to the purchasing public or are in any
way used in the "sale" or "advertising" of services within the
meaning of that case.
8 Opposer's objection to applicant's notice of reliance on documents
which were obtained during discovery through applicant's document
requests is also well taken. Although applicant identified these
documents in its notice of reliance as "printed publications" under
Trademark Rule 2.122(e), in fact they consist of what appear to be a
third-party advertisement or brochure for a tea called "Xanadu" and
copies of promotional materials for opposer's nightclub. None of
these materials is appropriate subject matter for submission by means
of a notice of reliance under Trademark Rule 2.122(e) and thus has
not been considered. Printed publications, which may be introduced
in evidence by notice of reliance, include books and periodicals
available to the general public in libraries or of general
circulation among members of the public or that segment of the public
which is relevant to an issue in a proceeding. See Andrea Radio
Corporation v. Premium Import Co., Inc., 191 USPQ 232 (TTAB 1976).
The burden of showing public availability, where there is doubt, lies
on the proponent of the evidence. Private promotional literature is
not presumed to be publicly available in the sense of being readily
accessible for inspection in libraries open to the public or of such
currency that the other party is presumably familiar with it. See
Glamorene Products Corporation v. Earl Grissmer Company, Inc., supra.
To the extent that some of opposer's promotional materials which were
Opposition No. 111,896
11
nor do they qualify as printed publications under that rule.
See Weyerhaeuser Co. v. Katz, supra (a notice of reliance on
search reports available only from private enterprises at a
fee was held improper); and Glamorene Products Corporation v.
Earl Grissmer Company, Inc., 203 USPQ 1090 (TTAB 1979).
On the other hand, while the extent of opposer's use does
not appear to be "trivial," as alleged by applicant, opposer’s
asserted "fame" of its mark has not been established.
(Opposer's brief, p.13). The record shows that opposer has
operated its XANADU nightclub and restaurant since 1995, a
period of only five
years,9 and features the performances of such entertainers as
Don Rickles, Neil Sedaka, Natalie Cole, Smokey Robinson and
Buddy Hackett, as well as musical revues and full-length
musical productions. Opposer's advertising and promotional
activities are conducted through such media as newspaper,
radio and direct mailings (to a list of over 150,000 people)
and are concentrated primarily in the areas of Philadelphia,
northern New Jersey and Delaware. Over a five year period,
the establishment has generated nearly $3.8 million in revenue

submitted by applicant were properly made of record in connection
with the testimony of Ms. Nielson, that material has been considered.
9 Opposer in fact claims that its nightclub has been in existence
since 1990, but there is no proof of use earlier than 1995 in the
record.
Opposition No. 111,896
12
(which amounts to less than $1 million per year) and opposer
has spent a total of approximately $575,000 in advertising and
promoting its
services.10 In addition, over 750,000 people have attended
performances at the nightclub during that period.
The nightclub appears to have achieved some measure of
regional success and recognition. However, the figures
provided by opposer do not appear extraordinary on their face,
and without any context for the figures, such as the
nightclub’s reputation in the industry, its share of the
relevant market, or some other basis for comparison with the
rest of the industry, their significance cannot be
meaningfully assessed. In other words, there is nothing in
the record to suggest that opposer's sales, for example,
reflect anything more than typical revenue for similar
establishments offering similar entertainment. See, for

10 Opposer asserts that its advertising expenditures "[have] exceeded
one million dollars over the last five years." (Opposer's brief, p.5
and Nielson test. p.21). However, Ms. Nielson testified that annual
expenditures for advertising "[have] been in excess of 75 thousand
per year" over a five-year period and that, in addition, opposer has
spent "in excess of 40 thousand annually" for direct mail advertising
during the same period. (Nielson test. pp.20-21). By our
calculations, advertising expenditures over the five-year period
would total $575,000, not one million dollars.
Opposition No. 111,896
13
example, Hard Rock Cafe Licensing Corp. v. Elsea, 48 USPQ2d
1400 (TTAB 1998).
In view of the foregoing and the suggestive quality of the
mark in connection with opposer's nightclub and restaurant, we
find the mark is, at best, only moderately strong as used in
connection with those services and, as such, entitled to a
more limited scope of protection than an arbitrary or fanciful
mark. Since opposer has provided no persuasive evidence that
wines and distilled spirits on the one hand and nightclubs or
restaurants on the other are related goods and services, the
protection of opposer's XANADU mark should not extend beyond
opposer's nightclub and restaurant services to wine and
distilled
spirits.11
Thus, we find that the contemporaneous use of the marks in
connection with the respective goods and services is not
likely to cause confusion.12

11 As a final note, opposer's suggestion that applicant intentionally
adopted its XANADU mark to trade directly on the goodwill of opposer
is unsupported. It is true that the person responsible for selecting
the word XANADU as applicant's mark, Mr. Kevin O'Brien, stated, in
response to a request for admission, that he had "[stayed] overnight"
at the Trump Taj Mahal Casino Resort "prior to August 8, 1997" that
is, at some time prior to the filing of the involved application.
However, there was no request for Mr. O'Brien to admit that he was
aware of the XANADU nightclub during that visit and moreover, there
is no particular time frame for that visit; it could have occurred
prior to the time the nightclub was in existence.
Opposition No. 111,896
14
Decision: The opposition is dismissed.
R. L. Simms
E. J. Seeherman
T. E. Holtzman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board

12 The cases relied on by opposer are not persuasive of a different
result. The BEEFEATER cases (including James Burrough Ltd. v.
Lesher, doing business as Beefeater's, 309 F.Supp. 1154, 163 USPQ 208
(D.C. Ind. 1969) and James Burrough Limited, et al. v. Sign of the
Beefeater, Inc., 540 F.2d 266, 192 USPQ 555 (7th Cir. 1976)) were
decided on the basis of such findings, among others not present here,
that the BEEFEATER mark is unique and arbitrary, that the mark is
famous as applied to gin, and that there has been substantial use of
the mark for over a century. As we have noted above, the record in
the present case falls far short of establishing that opposer's
XANADU mark is famous. The case of Death Tobacco Inc. v. Black Death
USA, 31 USPQ2d 1899 (D.C. Cal. 1993) is equally inapplicable. In
that case, the Court found that the respective products (vodka and
cigarettes) "are clearly related in consumers' minds" in view of the
"unique and sensational" nature of the mark and the way the products
were sold and marketed together in package stores. In the present
case, opposer has failed to show that the respective goods and
services are related in consumers' minds or that its mark is unique.
Moreover, while it could be said that nightclubs and alcohol are
complementary products and services, there is no evidence that
nightclubs or restaurants promote or even sell brands of alcohol
under the restaurant mark or that retail outlets such as liquor
stores promote alcohol and nightclubs/restaurants together under the
same mark.