Hale

Trademark Trial and Appeal Board

Oct 24, 2008

No. 78963970 (T.T.A.B. Oct. 24, 2008)

Mailed:
October 24, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hale
________

Serial No. 78963970
_______

B. Craig Killough of Barnwell Whaley Patterson & Helms LLC
for Nathan S. Hale.

Cimmerian Coleman, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Hairston, Zervas and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Nathan S. Hale (“applicant”) filed an intent-to-use
application to register the mark WHISKEY CREEK RANCH, in
standard character format, for services ultimately
identified as follows:
Recreational services, namely, providing hunting
preserves; summer camps and not including golf courses
or golf tournaments; environmental education services,
namely, providing classes about the environment;
recreational camp services, namely, providing wildlife
and nature studies for others, in Class 41; and,

Dude ranches, in Class 43.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78963970
2
Applicant disclaimed the exclusive right to use the word
“ranch.”
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark is likely to cause confusion with the mark WHISKEY
CREEK, in typed drawing format, for “golf courses, golf
tournaments, and providing facilities for recreational
activities,” in Class 41.1
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the
services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the

1 Registration No. 2492786, issued September 25, 2001; affidavits
under Sections 8 and 15 accepted and acknowledged.
Serial No. 78963970
3
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”).
A. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

We turn first to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
De Nemours & Co., supra. In a particular case, any one of
these means of comparison may be critical in finding the
marks to be similar. In re White Swan Ltd., 9 USPQ2d 1534,
1535 (TTAB 1988); In re Lamson Oil Co., 6 USPQ2d 1041, 1042
(TTAB 1988). In comparing the marks, 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 terms of their overall commercial
impression so that confusion as to the source of the goods
offered under the respective marks is likely to result.
San Fernando Electric Mfg. Co. v. JFD Electronics
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977);
Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735,
1741 (TTAB 1991), aff’d unpublished, No. 92-1086 (Fed. Cir.
June 5, 1992). The proper focus is on the recollection of
Serial No. 78963970
4
the average customer, who retains a general rather than
specific impression of the marks. Winnebago Industries,
Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106,
108 (TTAB 1975). In this case, the relevant public would
be members of the general public who golf, hunt, camp, and
otherwise enjoy outdoor activities.
The marks are virtually identical: WHISKEY CREEK
RANCH vs. WHISKEY CREEK. Applicant’s mark WHISKEY CREEK
RANCH incorporates the entirety of the registered mark.
The only difference between the marks is applicant’s
addition of the descriptive word “ranch” that it
disclaimed. Accordingly, we find that the similarity of
the marks is a factor that favors finding that there is a
likelihood of confusion.
B. The similarity or dissimilarity and nature of the
goods and services as described in the applications
and registration at issue.

It is well settled that applicant’s services and the
registrant’s services do not have to be identical or
directly competitive to support a finding that there is a
likelihood of confusion. It is sufficient if the
respective services are related in some manner and/or that
the conditions surrounding their marketing are such that
they would be encountered by the same persons under
Serial No. 78963970
5
circumstances that could, because of the similarity of the
marks used in connection therewith, give rise to the
mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In addition, we must keep in mind that the greater the
degree of similarity between the marks, the less similarity
between the services is required to support a finding of
likelihood of confusion. Where as here, the marks are
virtually identical, there need be only a viable
relationship between the services to find that a likelihood
of confusion exists. In re Opus One, Inc., 60 USPQ2d 1812,
1815 (TTAB 2001); In re Concordia International Forwarding
Corp., 222 USPQ 355, 356 (TTAB 1983).
There is no evidence in this record regarding any
relationship between golf courses and golf tournaments on
the one hand, and providing hunting preserves, summer
camps, classes about the environment, wildlife and nature
studies, and dude ranches on the other. However, the
registration also includes the service of providing
facilities for recreational activities.
In an ex parte appeal, likelihood of confusion is
determined on the basis of the services as they are
Serial No. 78963970
6
identified in the application and the cited registration.
In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); In re William
Hodges & Co., Inc., 190 USPQ 47, 48 (TTAB 1976). See also
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 set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed”).
As the Court of Customs and Patent Appeals, the
predecessor of our primary reviewing court, explained in
Tuxedo Monopoly, Inc. v. General Mills Fun Group, Inc., 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981):
Here, appellant seeks to register the
word MONOPOLY as its mark without any
restrictions reflecting the facts in
its actual use which it argues on this
appeal prevent likelihood of confusion.
We cannot take such facts into
consideration unless set forth in its
application.

Likewise, in this case, we must also analyze the
similarity or dissimilarity of the services based on the
description of services set forth in the application and
Serial No. 78963970
7
the cited registration, including providing facilities for
recreational activities. In other words, we must determine
whether there is a relationship between providing
facilities for recreational activities and providing
hunting preserves, summer camps, classes about the
environment, wildlife and nature studies, and dude ranches.
The Examining Attorney contends that providing
facilities for recreational activities is so broad that it
encompasses applicant’s services (i.e., hunting preserves,
summer camps, dude ranches, etc.).2 However, applicant

2 The Examining Attorney argued that applicant’s services are
within the registrant’s normal field of expansion citing In re 1st
USA Realty Professionals, Inc., 84 USPQ2d 1581 (TTAB 2007).
However, in that case, the Board noted that the “expansion of
trade” doctrine is essentially a determination relevant to
priority of use and that in ex parte appeals, “we look at the
question of the relatedness of the services . . . based on
whether consumers are likely to believe that the services emanate
from a single source, rather than whether the Examining Attorney
has shown that the registrant herein has or is likely to expand
its particular business to include the services of applicant.”
Specifically, the Board stated “expansion of trade” is considered
through a traditional relatedness of goods and services approach.
To the extent that there is evidence that third parties offer
both types of services that would be probative that consumers
would believe that both types of services emanate from a single
source. In re 1st USA Realty Professionals, Inc., 84 USPQ2d at
1584. Suffice it to say, it is incumbent upon the Examining
Attorney to support the relatedness of the services in general,
and the “expansion of trade” doctrine in particular, with
evidence. In this case, however, the Examining Attorney did not
introduce any third-party evidence showing that single party
rendered both types of services. The excerpts from the websites
submitted by the Examining Attorney showed only that the word
“ranch” is used in the name of some golf courses, that some golf
courses provide restaurant services, and one golf course provides
a lodge.
Serial No. 78963970
8
argues that the Examining Attorney’s “sweeping
interpretation” of the term “providing facilities for
recreational activities” as encompassing applicant’s
services is incorrect.3
The only reasonable interpretation that
can be given to the services
identification of the Registration is
that it encompasses only those specific
recreational facilities that are
traditionally and commonly present at
golf courses and golf tournaments.
This more limited interpretation of the
services identification is the only
construction that is in compliance with
the Lanham Act and the Code of Federal
Regulations. Further, the Registrant’s
website confirms that the narrower
interpretation conforms to the
Registrant’s actual use of the mark.4

In essence, applicant asserts that if the term “providing
facilities for recreational activities” is unrestricted
(i.e., not limited to golf), then the registration’s
description of services is “improperly indefinite” because
it could include any number of recreational activities
unrelated to golf5 and that these activities could fall
within multiple classes of services.6 Accordingly,
applicant concludes that “‘providing facilities for
recreational activities’ should be construed to mean

3 Applicant’s Brief, pp. 5-6.
4 Applicant’s Brief, p. 6.
5 Applicant’s Brief, p. 8.
6 Applicant’s Brief, p. 9.
Serial No. 78963970
9
facilities that are commonly found at golf courses, such as
changing facilities, driving ranges, and the like. The
phrase should most certainly not have been construed to
identify every imaginable form of recreation under the sun,
including activities entirely unrelated to golf.”7
Unfortunately for applicant, the law is clear that the
issue of likelihood of confusion must be determined on the
basis of the services as they are identified in the
application and the cited registration. Here, there are no
limitations in the cited registration as to facilities and
activities complementary to golfing. Accordingly, for our
purposes, the description of services in the cited
registration is broad enough to encompass providing
facilities of recreational activities of all types,
including activities unrelated to golf such as hunting,
summer camps, recreational camps, and dude ranches. See
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 941
(Fed. Cir. 1983) (even though opposer used its mark in
connection with toy balloons to promote its soft drinks,
because there was no restriction in the description of
goods limiting the balloons to promotion of the soft

7 Applicant’s Brier, pp. 8-9.
Serial No. 78963970
10
drinks, the board improperly read limitations into the
registration).8
In addition, because “providing facilities for
recreational activities” was registered in Class 41, we
presume that the activities encompassed by that description
of services fall within the ambit of Class 41. TMEP
§1402.03 (5th ed. 2007) (“However, the conclusions that a
term would clearly include items classified in more that
one class should not be drawn unless reasonable, in light
of the commercial relationships between all the goods or
services identified in the application”). Therefore, we
will not expand the description of services in the
registration to include activities beyond the scope of
Class 41.
C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because there are no limitations as to channels of
trade or classes of purchasers in either the application or
the registration, and because “providing facilities for
recreational activities” is broad enough to encompass
applicant’s services, it is presumed that the registration

8 The proper way to pursue this argument is to file a petition to
partially cancel the cited registration under Section 18 of the
Trademark Act of 1946, 15 U.S.C. §1068 (in a cancellation
proceeding, “the Director . . . may modify . . . the registration
by limiting the goods or services specified therein”).
Serial No. 78963970
11
and the application encompass all of the services of the
type described in the description of services, that the
services so identified move in all channels of trade normal
for those services, and that the services are available to
all classes of purchasers for the listed services. See In
re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992).
Accordingly, we must presume that applicant’s hunting
preserves, summer camps, and dude ranches and the
registrant’s facilities for recreational activities move in
the same channels of trade and are rendered to the same
classes of purchasers.
D. Balancing the factors.
In view of the facts that the marks are virtually
identical and that the registrant’s services of providing
facilities for recreational activities encompass
applicant’s services, and because we must presume that the
services move in the same channels of trade and are sold to
the same classes of consumers, we find that applicant’s
registration of the mark WHISKEY CREEK is likely to cause
confusion with the mark in the cited registration, WHISKEY
CREEK RANCH.
Decision: The refusal to register is affirmed as to
both classes.