Isle of Capri Casinos, Inc.

Trademark Trial and Appeal Board

May 24, 2001

No. 75702486 (T.T.A.B. May. 24, 2001)

5/24/01 Paper No. 10
CEW
UNITED STA
Trade
In re
Marsha K. Hoover an
McGrath for Isle of
Andrew J. Benzmille
Office 113 (Meryl H
Before Hairston, Wa
Trademark Judges.
Opinion by Walters,
Isle of Capri
application to regi
gift shops.”1
The Trademark
registration under
U.S.C. 1052(d), on
resembles the mark

1 Serial No. 75/702,486,
based on use in commerc
August 1992.
IS NOT
THIS DISPOSITION
CITABLE AS PRECEDENT
OF THE T.T.A.B.TES PATENT AND TRADEMARK OFFICE
___________
mark Trial and Appeal Board
___________
Isle of Capri Casinos, Inc.
___________
Serial No. 75/702,486
___________
d Kevin A. Thompson of Davis, Mannix &
Capri, Inc.
r, Trademark Examining Attorney, Law
ershkowitz, Managing Attorney).
____________
lters and Holtzman, Administrative
Administrative Trademark Judge:
Casinos, Inc. has filed a trademark
ster the mark BANANA CABANA for “retail
Examining Attorney has finally refused
Section 2(d) of the Trademark Act, 15
the ground that applicant’s mark so
BANANA CABANA, previously registered for

in International Class 35, filed May 11, 1999,
e, alleging first use and use in commerce as of
Serial No. 75/702,486
2
“restaurant services,”2 that, if used on or in connection
with applicant’s services, it would be likely to cause
confusion or mistake or to deceive.
Applicant has appealed. Both applicant and the
Examining Attorney have filed briefs, but an oral hearing
was not requested. We affirm the refusal to register.
Our determination 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 likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca
Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and
the cases cited therein.
Considering, first, the marks, there is no question
that applicant’s mark is identical to the registered mark.
It is well established that when the marks at issue are the
same or nearly so, the goods and/or services in question do

2 Registration No. 1,722,752 issued October 6, 1992, to Angie S. and
John J. Avinger, in International Class 42. [Sections 8 and 15
affidavits accepted and acknowledged, respectively.]
Serial No. 75/702,486
3
not have to be identical to find that confusion is likely.
As we stated in In re Concordia International Forwarding
Corp., 222 USPQ 352, 356 (TTAB 1983), “… the greater the
degree of similarity in the marks, the lesser the degree of
similarity that is required of the products or services on
which they are being used in order to support a holding of
likelihood of confusion.”
The Examining Attorney contends that applicant’s gift
shop services are closely related to registrant’s restaurant
services. In support of his position, the Examining
Attorney submited numerous copies of third-party
registrations wherein the same mark is registered for
restaurant services and gift shop services and, in some
cases, for casino services as well. The Examining Attorney
also submitted excerpts from the LEXIS/NEXIS database of
articles referring to, in particular, casinos and resorts
that house both restaurants and gift shops.
Applicant submitted the declaration of James D. Guay,
applicant’s vice president of marketing, who states that
applicant’s services are limited to gift shops located in
its casinos; that the gift shops are only advertised within
its casinos; that no food items are sold in its gift shops;
and that, although applicant has both gift shops and
restaurants in its casinos, the restaurants have entirely
different names, such as Calypso’s, Farraddays’ and
Serial No. 75/702,486
4
Tradewinds. Applicant argues that the services are quite
different; that the respective services do not appeal to the
same market; and that its mark and the registered mark have
coexisted for a number of years without any evidence of
actual confusion.
The question of likelihood of confusion must be
determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services recited in the registration, rather than what the
evidence shows the goods or services actually are. Canadian
Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d
1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems,
Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16
USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North
American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991).
Further, it is a general rule that goods or services need
not be identical or even competitive in order to support a
finding of likelihood of confusion. Rather, it is enough
that goods or services are related in some manner or that
some circumstances surrounding their marketing are such that
they would be likely to be seen by the same persons under
circumstances which could give rise, because of the marks
used therewith, to a mistaken belief that they originate
from or are in some way associated with the same producer or
that there is an association between the producers of each
Serial No. 75/702,486
5
parties’ goods or services. In re Melville Corp., 18 USPQ2d
1386 (TTAB 1991), and cases cited therein.
Despite applicant’s contention’s regarding the specific
manner in which it offers its services within its own
casinos, its recitation of services contains no such
limitations. Based on the evidence of record, we find that
applicant’s gift shop services are sufficiently related to
restaurant services that, if identified by identical or
substantially similar marks, confusion as to source or
sponsorship is likely. Applicant’s own evidence indicates
that it offers both restaurant and gift shop services in its
casinos. The fact that applicant presently does so under
different marks is not persuasive of a different result
herein.
With regard to applicant’s assertion that it is aware
of no instances of actual confusion occurring as a result of
the contemporaneous use of the marks of applicant and
registrant, we note that, while a factor to be considered,
the absence or presence of actual confusion is of little
probative value where we have little evidence pertaining to
the nature and extent of the use by applicant and
registrant. Moreover, the test under Section 2(d) is not
actual confusion but likelihood of confusion. See, In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-1027 (TTAB 1984); and
In re General Motors Corp., 23 USPQ2d 1465, 1470-1471.
Serial No. 75/702,486
6
Therefore, we conclude that in view of the identity of
applicant’s and registrant’s marks, their contemporaneous
use on the closely related services involved in this case is
likely to cause confusion as to the source or sponsorship of
such services.
Decision: The refusal under Section 2(d) of the Act is
affirmed.