Fiesta Palms, LLC

Trademark Trial and Appeal Board

Aug 19, 2009

No. 78696302 (T.T.A.B. Aug. 19, 2009)

Mailed:
August 19, 2009
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fiesta Palms, LLC
________

Serial No. 78696302
_______

Scott M. Hervey of Weintraub Genshlea Chediak Sproul for
Fiesta Palms, LLC.

Aisha Clarke, Trademark Examining Attorney, Law Office 101
(Ronald R. Sussman, Managing Attorney).
_______

Before Bucher, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

Fiesta Palms, LLC (applicant) has applied to register
the mark PALMS PLACE CONDO HOTEL SPA AT THE PALMS LAS VEGAS
in standard characters on the Principal Register for
services now identified as “real estate services, namely
real estate development” in International Class 36.1

1 Application Serial No. 78696302, filed August 19, 2005, claiming first
use of the mark anywhere and first use of the mark in commerce on
December 1, 2004.

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78696302
2
Applicant has disclaimed the words "CONDO HOTEL SPA" and
"LAS VEGAS."
The Examining Attorney has issued a final refusal
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d),
based on a likelihood of confusion between applicant’s
PALMS PLACE CONDO HOTEL SPA AT THE PALMS LAS VEGAS mark and
the marks in the following three active registrations:
Registration No. 2312178 for the mark THE PALMS
in typed form on the Principal Register, owned by
Plaza Group Licensing, LLC, for “real estate
management and management of condominiums; real
estate brokerage services” in International Class
36; the registration issued on January 25, 2000;

Registration No. 2322082 for the mark THE PALMS
in special form shown below on the Principal
Register, also owned by Plaza Group Licensing,
LLC, and also for “real estate management and
management of condominiums; real estate brokerage
services” in International Class 36; the
registration issued on February 22, 2000;

and

Registration No. 3027237 for the mark ROYAL PALM
PLACE in standard characters on the Principal
Register, owned by James H. Batmasian, for “real
estate management and leasing of civic,
municipal, cultural, retail, office, residential,
entertainment, fitness, restaurant and commercial
developments and properties; property and
building management; real estate management and
leasing of shopping centers” in International
Class 36 and “real estate development, planning
and laying out of a civic, municipal, cultural,
Serial No. 78696302
3
retail, office, residential, entertainment,
fitness, restaurant, and commercial developments
and properties; developing shopping centers” in
International Class 37; the registration issued
on December 13, 2005.

Applicant has appealed. Applicant and the Examining
Attorney have filed briefs. We affirm.
There is one noteworthy procedural aspect to this
case. The Board had suspended action on this appeal
pending disposition of a petition to cancel applicant filed
with respect to Registration No. 3027237, the third cited
registration above, wherein applicant alleged priority,
likelihood of confusion and abandonment (Cancellation No.
92047044). The registration survived that cancellation
proceeding; the Board dismissed that petition to cancel
with prejudice on January 21, 2009.
Turning to the merits of this appeal, Section 2(d) of
the Trademark Act precludes registration of an applicant’s
mark “… which so resembles a mark registered in the Patent
and Trademark Office… as to be likely, when used on or in
connection with the goods of the applicant, to cause
confusion….” 15 U.S.C. § 1052(d). The opinion in In re
E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1977) sets forth the factors to consider in
determining likelihood of confusion. Here, as is often the
case, the crucial factors are the similarity of the marks
Serial No. 78696302
4
and the similarity of the services identified in the
application and the cited registrations. Federated Foods,
Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24,
29 (CCPA 1976) (“The fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services]
and differences in the marks.”).
We will first address the issue of likelihood of
confusion with regard to the two registrations for THE
PALMS marks, owned by Plaza Group Licensing, LLC. We will
then address the third cited registration for ROYAL PALM
PLACE, owned by James H. Batmasian, separately.
First, we consider the marks. In comparing the marks
we must consider the appearance, sound, connotation and
commercial impression of the marks at issue. Palm Bay
Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Also, “… it is well established that the test to be
applied in determining likelihood of confusion is not
whether marks are distinguishable on the basis of a side-
by-side comparison but rather whether they so resemble one
another as to be likely to cause confusion, and this
necessarily requires us to consider the fallibility of
memory over a period of time. That is to say, the emphasis
Serial No. 78696302
5
must be 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, 108 (TTAB 1975) (internal citations
omitted).
The Examining Attorney argues that applicant’s mark,
PALMS PLACE CONDO HOTEL SPA AT THE PALMS LAS VEGAS, is
similar to the two cited THE PALMS marks, because they
share THE PALMS. In presenting this argument, the
Examining Attorney acknowledges that we must view the marks
in their entireties but argues that THE PALMS is a dominant
element in applicant’s mark. The Examining Attorney also
argues that the design and stylization in the special-form
version of THE PALMS is not sufficient to distinguish the
mark from applicant’s mark.
Applicant argues that the Examining Attorney has
failed to view the marks in their entireties and that there
are significant differences in the appearance, sound and
commercial impression of the respective marks. Applicant
argues that appearance is especially important here,
relative to sound, because relevant consumers for the
services at issue here would encounter the marks in printed
form rather than through sound alone. Applicant also
argues that, “… all components of a mark must be given
Serial No. 78696302
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equal weight,” citing Opryland USA Inc. v. The Great
American Music Show Inc., 970 F.2d 847, 23 USPQ2d 1471
(Fed. Cir. 1992). Applicant’s Brief at 6. Applicant
argues further that its mark, which is in standard
characters, is distinguishable from both registered THE
PALMS marks on the basis of “stylistic” differences.
Also, applicant argues that the reference to THE
PALMS, a hotel in Las Vegas, in its mark is dominant in the
commercial impression of the mark. Applicant states, “The
Palms is a world renowned hotel and casino in Las Vegas.
The Palms and its owners, the Maloof family, have been
profiled in numerous magazines, including Forbes, Billboard
and the Hollywood Reporter. … Contributing to its
worldwide notoriety, the Palms has close associations with
various television programs.” Applicant’s Brief at 11.
Applicant has provided examples, including certain
articles, to support this argument.2
In this regard applicant also points to the fact that
it has applied to register or registered forty-five marks
which include “PALMS” in some form. Applicant has provided
copies of ten of these registrations, including
registrations for the marks: PALMS A MALOOF CASINO RESORT;

2 Applicant provided these exhibits for the first time with its appeal
brief. Although we may exclude evidence filed after the appeal as
Serial No. 78696302
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CLUB PALMS; PALMS; and PALMS CASINO RESORT.3 Applicant
argues, based on this evidence, that because relevant
consumers are familiar with these marks, the reference to
THE PALMS, the hotel, in the mark at issue here will be
dominant in projecting the commercial impression of the
mark. For the record, all of the registrations applicant
provided cover services other than real estate development
services; they cover services, such as, hotel, casino, bar,
restaurant and certain entertainment services.
First, we will address applicant’s arguments related
to its other PALMS marks and the renown of those marks and
the hotel’s owners. In effect, applicant argues that it
has a family of PALMS marks and that the existence of this
family of marks will preclude confusion between the mark at
issue here and the cited marks. We reject this argument.
The Board stated the following recently:
In an ex parte appeal, the focus of the
likelihood-of-confusion analysis must be the mark
applicant seeks to register, not other marks
applicant may have used or registered. In other
words, a family-of-marks argument is not
available to an applicant seeking to overcome a
likelihood-of-confusion refusal. In re Lar Mor

late, we will allow this evidence in the record because the Examining
Attorney neither noted nor objected to this evidence.
3 Applicant first referred to these registrations, but did not provide
copies, in its response of June 9, 2006. In the final Office action
which followed, the Examining Attorney did not advise applicant that
copies were required to make registrations of record, nor has the
Examining Attorney objected to this evidence. Accordingly, we will
allow this evidence in the record.
Serial No. 78696302
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International, Inc., 221 USPQ 180 (TTAB 1983)
(“In reaching the conclusion of no likelihood of
confusion, we have given no weight to applicant's
argument … that it owns a family of French-word
marks all beginning with the word ‘TRES’… .”); In
re Ald, Inc., 148 USPQ 520, 521 (TTAB 1965)
(“Likewise, in view of the specific prohibition
of Section 2(d) of the Statute, the fact that
applicant may possess a ‘family’ of marks
characterized by the term ‘ALD’ is of no
particular significance herein if the mark for
which applicant now seeks registration,
‘ALDPRESS’, when considered in its entirety, is
confusingly similar to the previously registered
mark ‘ALLPREST’.” (footnotes omitted)). See also
In re U.S. Plywood-Champion Papers, Inc., 175
USPQ 445, 446 (TTAB 1972) (“Applicant's ownership
and registration of marks other than the mark
sought to be registered herein is immaterial and
irrelevant to the specific issue before us, and
cannot justify the registration of what could be
a confusingly similar mark.” (citations
omitted)).

In re Cynosure Inc., 90 USPQ2d 1644, 1645-1646 (TTAB 2009).
While we reject this argument as inappropriate, we note
further that we fail to see how the argument would support
applicant’s ultimate position. Applicant focuses this
argument on the importance of the use of THE PALMS in
relation to applicant’s hotel services. In doing so,
applicant draws attention to the very component of its mark
which corresponds to the marks in the two cited
registrations. This argument demonstrates a likelihood of
confusion, rather than the absence of a likelihood of
confusion.
Serial No. 78696302
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Turning to a comparison of the marks at issue, we also
reject applicant’s arguments based on Opryland USA Inc. v.
The Great American Music Show Inc. We find applicant’s
interpretation of the case strained. More importantly, we
find significant differences between that case and the
facts before us here. That is, it would not be appropriate
to give equal weight to each of the components of
applicant’s mark. As the Court of Appeals for the Federal
Circuit observed, “… in articulating reasons for reaching a
conclusion on the issue of confusion, there is nothing
improper in stating that, for rational reasons, more or
less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. Indeed,
this type of analysis appears to be unavoidable.” In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
In the case of applicant’s mark we find the
disclaimed, nondistinctive wording, CONDO HOTEL SPA and LAS
VEGAS to be of lesser importance, and the distinctive
wording, PALMS PLACE and THE PALMS, which is not
disclaimed, to be of greater importance and dominant. In
fact, each of these distinctive elements stands out as an
independent source indicator in the mark. A potential
Serial No. 78696302
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consumer might very well look to either PALMS PLACE or THE
PALMS as identifying the source of applicant’s services due
to the structure of the entire mark.
We have no doubt that PALMS PLACE and THE PALMS are
dominant because these elements are key to both the
connotation and commercial impression applicant’s mark
projects. These elements connote and create the impression
of a warm and inviting environment. The cited THE PALMS
marks convey the same connotation and commercial
impression.
In concluding that these components are dominant, we
note the absence of any evidence that PALM or PALMS is weak
as a result of extensive third-party use in relation to
real estate services. Cf. Knight Textile Corp. v. Jones
Investment Co., 75 USPQ2d 1313, 1316 (TTAB 2005).
We also reject applicant’s arguments regarding the
display of the respective marks. First, applicant
misconstrues the significance of the display of a mark in
standard characters, the display applicant elected for the
mark in this application. A mark in standard characters
covers the mark in any typeface or style within reason.
The scope of the registration for such a mark is not
restricted to any particular type style as applicant
suggests. The same is true for a typed version of a mark,
Serial No. 78696302
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as in the case of the first cited registration for THE
PALMS which we referenced above.4 Squirtco v. Tomy Corp.,
697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983). See
also Wet Seal Inc. v. FD Management Inc., 82 USPQ2d 1629,
1639 (TTAB 2007) (“[B]ecause applicant’s mark ARDENBEAUTY
is presented in typed or standard character form, the
wording could reasonably be displayed in the same block
letter form as ARDEN B, thereby increasing the visual
similarity of the two marks.”) and In re Hester Industries,
Inc., 231 USPQ 881, 882 n.6 (TTAB 1986) (“Inasmuch as the
drawing of applicant’s mark is in typed form, applicant is
not limited to any particular form of display, and might
use its mark in the same form as registrant.”).
Therefore, both displays of THE PALMS in the cited
registrations are within the scope of the standard-
character version of applicant’s mark in the application.5

4 Earlier USPTO rules referred to “typed” drawings to identify what is
essentially the same as standard character drawings in the current
rules. See Trademark Rule 2.52, 37 C.F.R. § 2.52.
5 In this connection we note that in asserting these arguments, and
elsewhere, applicant relies heavily on infringement cases from the
federal courts, for example, King of the Mountain Sports Inc. v.
Chrysler Corp., 185 F.3d 1084, 51 USPQ2d 1349 (10th Cir. 1999). The
analysis required in an infringement case differs significantly from
the analysis in this registration case. In re Bercut-Vandervoort &
Co., 229 USPQ 763, 765 (TTAB 1986). In the infringement context the
courts look to the totality of circumstances surrounding the actual use
of the mark at issue. Thus, applicant’s arguments based on these cases
are not persuasive.

Serial No. 78696302
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As to the design element in the cited special-form
version of THE PALMS, we find this element insufficient to
distinguish the marks. As is most often the case, THE
PALMS, not the design element, dominates because the
wording is likely to be used in requesting registrant’s
services. In re Appetito Provisions Co. Inc., 3 USPQ2d
1553, 1554 (TTAB 1987) (“… if one of the marks comprises
both a word and a design, then the word is normally
accorded greater weight because it would be used by
purchasers to request the goods or services.”).
Accordingly, when we view applicant’s mark and the two
cited THE PALMS marks in their entireties in terms of
appearance, sound, connotation and commercial impression,
we conclude that applicant’s mark is similar to the marks
in both cited registrations for THE PALMS marks. While
there are obvious differences in appearance and sound due
to the additional wording in applicant’s mark, the strong
similarities in connotation and commercial impression are
more important because most of the additional wording is
not distinctive and has been disclaimed. Furthermore, THE
PALMS, which is a dominant element in applicant’s mark, is
the only word element, and the dominant element, in both of
the cited registrations for THE PALMS marks.
Serial No. 78696302
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Next, we consider the relationship between the
services identified in the application and in the cited
registrations for THE PALMS. The services of applicant and
the registrant need not be identical to find a likelihood
of confusion under Trademark Act Section 2(d). We may find
the services to be related if the circumstances surrounding
their marketing would result in relevant consumers
mistakenly believing that the services originate from or
are associated with the same source. See In re
International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978).
Furthermore, in comparing the services we must
consider the services as identified in the application and
cited registrations. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods [or
services] set forth in the application [and registration]
regardless of what the record may reveal as to the
particular nature of an applicant’s goods [or services],
the particular channels of trade or the class of purchasers
to which the sales of goods [or services] are directed.”).
Serial No. 78696302
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Applicant identifies its services as, “real estate
services, namely real estate development.” The services
identified in the two cited registrations for THE PALMS
are, “real estate management and management of
condominiums; real estate brokerage services.”
Here again, applicant relies heavily on infringement
cases from the federal courts in framing its arguments,
cases which involve an analysis which differs significantly
from the analysis which is appropriate in a registration
case. Applicant argues that, even though the respective
services both relate to real estate, they are sufficiently
distinct to preclude confusion. Applicant explains its
services, as follows, “Applicant’s real estate development
services correspond to the development and ultimate sale of
high-end cosmopolitan luxury condominium units, which
include spa, fitness and similar exclusive amenities….”
Applicant’s Brief at 18. The specimens of record, in fact,
show that applicant uses its mark in connection with the
development of condominium properties.
The Examining Attorney argues that the services in the
application and the cited registrations for THE PALMS are
related because applicant’s services are identified broadly
and encompass the services identified in the cited
registrations.
Serial No. 78696302
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Applicant’s own explanation regarding its services
lends support to the Examining Attorney’s position. That
is, applicant substantiates the fact that real estate
development services are broad enough to include the
service of developing and selling condominiums. Logic
alone would dictate the conclusion that the development and
sale of condominiums is closely related to the management
of condominiums, one of the services identified in the
cited registrations for THE PALMS.
Also, the Examining Attorney has provided evidence to
support her position. First, the Examining Attorney has
provided copies of numerous used-based, third-party
registrations showing that the same mark has been
registered for both the services identified in the
application and those identified in the cited registrations
for THE PALMS, for example:
Registration No. 2437083 for the mark THE DESCO
GROUP for “Real estate brokerage, namely, land
acquisition, real estate management and real
estate leasing” and “Real estate site selection,
real estate development and construction
management”;

Registration No. 2961726 for the mark SOUTHERN
LAND for “Real estate brokerage services; leasing
of real estate; real estate management” and “Real
estate development; land development services,
namely, master planning and laying out of
residential and/or commercial communities;
construction of utility facility; house building;
commercial building construction; golf course
Serial No. 78696302
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construction; landscape lighting installation
services; installation of landscape irrigation
systems”;

Registration No. 3101151 for the mark WESTHAVEN
for “Real estate brokerage services; leasing of
real estate; real estate management” and “Real
estate development; land development services,
namely, master planning and laying out of
residential and/or commercial communities;
residential and commercial building construction
and construction management services; golf course
construction; landscape lighting installation
services; installation of landscape irrigation
systems”;

Registration No. 3038948 for the mark DG THE
DEVLIN GROUP for “real estate brokerage, real
estate management, and real estate acquisition
services” and “real estate development services”;

Registration No. 3019129 for the mark CROSSWINDS
for “Land acquisition, namely, real estate
brokerage, real estate agency services, real
estate listing, real estate management” and “Real
estate development, building construction and
repair, construction management, construction
planning, construction services, namely, planning
and laying out and custom construction of
residential and commercial communities,
construction supervision, custom construction of
homes, residential and commercial building
construction”; and

Registration No. 3125416 for the mark BRESSI
RANCH for “Consultation in the fields of real
estate management and real estate brokering; real
estate management and real estate brokerage
services of residential communities, undeveloped
properties and individual residences” and “Real
estate development and planning services, namely
developing, laying out and constructing
residential communities and individual
residences.”

Attachments to Final Office Action of September 8, 2006.
Serial No. 78696302
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The third-party registrations serve to suggest that
the services in the applications and the services in the
cited registrations are the types of services which may
emanate from a single source. In re TSI Brands Inc., 67
USPQ2d 1657, 1659 (TTAB 2002); In re Albert Trostel & Sons
Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
The Examining Attorney has also provided evidence from
websites showing that third parties advertise the offer of
both the services identified in the application and those
identified in the cited registrations under the same mark,
for example, see copies of pages from
vermontrealestate.com, rockgroupdevelopment.com, and
belz.com. Attachments to Final Office Action of September
8, 2006.
Accordingly, we conclude that the services identified
in the application and the services identified in the cited
registrations for THE PALMS are closely related, if not,
overlapping.
Applicant also argues that there would not be a
likelihood of confusion in this case because the potential
customers for its services are sophisticated. In this
regard applicant points to the fact that it develops high-
end condominiums, as we noted, which sell for hundreds of
thousands of dollars. Applicant argues further, “The
Serial No. 78696302
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purchasers of Applicant’s services are no doubt
sophisticated and knowledgeable with respect to seeking and
utilizing Applicant’s services, and exercise a high degree
of care with respect to consummating such purchases.
Likewise, the registered marks cover real estate
management, brokerage and planning services, which … are
purchased or otherwise consumed by sophisticated
professional buyers, or individual homeowners/purchasers.”
Applicant’s Brief at 18.
We first note that neither applicant’s services, as
identified, nor those identified in the cited registrations
are restricted to high-end properties. Nonetheless, we
readily acknowledge that the types of real estate services
at issue here are the types of services which generally
involve relatively substantial transactions which are
undertaken with a significant degree of care. However,
when we view the totality of the circumstances, we find
that the degree of sophistication and care would not
diminish a likelihood of confusion which might otherwise be
present. The potential purchasers would include the
general public, as applicant acknowledges. Furthermore,
even sophisticated purchasers are not immune from trademark
confusion. In re Decombe, 9 USPQ2d 1812, 1814 (TTAB 1988);
In re Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983).
Serial No. 78696302
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Accordingly, we conclude that the factor related to
purchaser sophistication is neutral in this case.
Finally, after considering all evidence and arguments
bearing on the du Pont factors, including any we have not
specifically discussed here, we conclude that there is a
likelihood of confusion between applicant’s PALMS PLACE
CONDO HOTEL SPA AT THE PALMS LAS VEGAS mark when used in
connection with “real estate services, namely real estate
development” and the two registered THE PALMS marks when
used in connection with “real estate management and
management of condominiums; real estate brokerage
services.”
Next we turn to consideration of the likelihood of
confusion between applicant’s PALMS PLACE CONDO HOTEL SPA
AT THE PALMS LAS VEGAS mark and the mark in the third cited
registration, ROYAL PALM PLACE.
In this instance, we begin our analysis with
consideration of the respective services. Applicant’s
services are identified as “real estate services, namely
real estate development.” The services identified in the
cited registration are “real estate management and leasing
of civic, municipal, cultural, retail, office, residential,
entertainment, fitness, restaurant and commercial
developments and properties; property and building
Serial No. 78696302
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management; real estate management and leasing of shopping
centers” and “real estate development, planning and laying
out of a civic, municipal, cultural, retail, office,
residential, entertainment, fitness, restaurant, and
commercial developments and properties; developing shopping
centers.”
In this case, the services identified in the
application and the cited registration are, at least in
part, identical. That is, both include real estate
development. Also, based on the evidence the Examining
Attorney provided, which we discussed above, we conclude
further that the services are otherwise related. Thus, the
services identified in the application and cited
registration are identical or otherwise related.
Next we turn to consideration of the marks, and we
begin by noting that the degree of similarity between the
marks necessary to support a finding of likelihood of
confusion declines when the services are identical.
Century 21 Real Estate Corp. v. Century Life of America,
970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir. 1992), cert.
denied, 506 U.S. 1034 (1992).
As we noted above in our analysis of applicant’s mark,
both PALMS PLACE and THE PALMS stand out as dominant
elements either of which could serve independently as a
Serial No. 78696302
21
source indicator and the source of confusion relative to
other marks. Under the circumstances present here, we
conclude that the registered ROYAL PALMS PLACE mark is
similar to applicant’s PALMS PLACE CONDO HOTEL SPA AT THE
PALMS LAS VEGAS, due to the dominance of PALMS PLACE in
applicant’s mark.
Also, as we discussed above, we conclude that
purchaser sophistication would not diminish the likelihood
of confusion.
And finally, after considering all evidence and
arguments bearing on the du Pont factors, including any we
have not specifically discussed here, we conclude that
there is a likelihood of confusion between applicant’s
PALMS PLACE CONDO HOTEL SPA AT THE PALMS LAS VEGAS mark
when used in connection with “real estate services, namely
real estate development” and the registered ROYAL PALM
PLACE mark when used in connection with services which
include “real estate development.”
Decision: We affirm the refusal under Trademark Act
Section 2(d) as to all three cited, prior registrations.