Jay S. Cohen

Trademark Trial and Appeal Board

Sep 22, 2008

No. 78701838 (T.T.A.B. Sep. 22, 2008)

Mailed:
September 22, 2008
Bucher
UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Jay S. Cohen
________

Serial No. 78701838
_______

Jacqueline M. Cohen for Jay S. Cohen.

Anthony M. Rinker, Trademark Examining Attorney, Law Office
102 (Karen M. Strzyz, Managing Attorney).
_______

Before Bucher, Walsh and Bergsman, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Jay S. Cohen seeks registration on the Principal
Register of the mark Elite Cruises (in standard character format)
for services recited in the application, as amended, as
follows:
“travel booking agencies, namely, making
reservations and bookings for transportation,
hotels, excursions, and cruises; providing travel
booking services via the Internet and telephone;
providing a website for use in reserving and
booking transportation, excursions, hotels, and
cruises” in International Class 39.1

1 Application Serial No. 78701838 was filed on August 26, 2005
based upon applicant’s claims of first use anywhere at least as
early as June 1, 1999 and first use in commerce at least as early
as August 5, 2000. No claim is made to the word “Cruises” apart
from the mark as shown.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 78701838
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This case is now before the board on appeal from the
final refusal of the Trademark Examining Attorney to register
this designation based upon Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney
has found that applicant’s mark, when used in connection with
the identified services, so resembles the mark ELITE YACHT
CHARTERS (in typeset format) registered in connection with
“arranging travel tours and chartering yachts” in
International Class 39,2 as to be likely to cause confusion,
to cause mistake or to deceive.
The Trademark Examining Attorney and applicant have
briefed the issues in this appeal. We affirm the refusal to
register.
In making the case for registrability herein, applicant
argues that the cited mark is a weak mark that is entitled
to only a limited scope of protection; that the Trademark
Examining Attorney has improperly dissected the marks before
comparing the dissected portions thereof, finding confusing
similarity in a case where the marks are not similar in
appearance, sound, connotation or commercial impression;

2 Registration No. 2283380 issued on October 5, 1999; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged. No claim is made to the term “Yacht Charters” apart
from the mark as shown.

Serial No. 78701838
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that he has misconceptions about the relatedness of the
respective services and trade channels; and that the
Trademark Examining Attorney has disregarded the highly
scrutinized nature of the purchases associated with the
marks at issue.
By contrast, the Trademark Examining Attorney contends
that when compared in their entireties, the marks are quite
similar; that the respective travel-related services are
related to each other and could well involve similar trade
channels; that even sophisticated purchasers may not be
immune from source confusion; and that the cited mark is not
weak or diluted in the context of the specific services.
Likelihood of Confusion
We turn then to a consideration of the issue of
likelihood of confusion. Our determination of likelihood of
confusion is based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing on
this issue. See In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003).
Serial No. 78701838
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The number and nature of similar marks registered
in connection with related services

Applicant argues that the word “Elite” is so commonly
used in connection with a wide variety of goods and services
that the cited mark is weak and entitled to only a limited
scope of protection. Specifically, applicant argues that
there are over two-thousand federal trademark applications and
registrations for marks incorporating the word “Elite,” of
which 764 are live registrations. Applicant submitted copies
of thirty-five third-party registrations reciting services in
International Class 39.
We agree with the Trademark Examining Attorney that
among these thirty-five registrations, ones for services such
as airline passenger services, limo and car rental services,
freight hauling and bulk chemical transporting services,
parking garage services, bus tours, courier services, and the
like, are hardly persuasive of our finding the word “Elite”
weak for registrant’s services of “arranging travel tours and
chartering yachts.”
The following nine registrations owned by four different
service mark owners reflect the class 39 services closest to
those of registrant and applicant, including those initially
cited as bars under Section 2(d) of the Act:
Serial No. 78701838
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ELITE AVIATION for “airplane chartering” in
International Class 39;3
for “airplane chartering” in
International Class 39;4
ELITE ISLAND VACATIONS for “arranging travel tours” in
International Class 39;
“travel agency services, namely,
making reservations and
bookings for temporary lodging;
hotel services” in Int. Class
43;5
ELITE ISLAND RESORTS for “arranging travel tours” in
International Class 39;
“travel agency services, namely
making reservations and
bookings for temporary lodging;
hotel services” in Int. Class
43;6
ELITE EXCURSIONS for “administering a consumer
benefit program which entitles

3 Registration No. 2392090 issued on October 3, 2000; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged. No claim is made to the word “Aviation” apart from
the mark as shown.

4 Registration No. 2392111 issued on October 3, 2000; Section 8
affidavit (six-year) accepted and Section 15 affidavit
acknowledged. No claim is made to the word “Aviation” apart from
the mark as shown.

5 Registration No. 2807308 issued to Elite Island Vacations,
Inc. on January 20, 2004. No claim is made to the term “Island
Vacations” apart from the mark as shown.

6 Registration No. 2809214 issued to Elite Island Vacations,
Inc. on January 27, 2004. No claim is made to the term “Island
Resorts” apart from the mark as shown.
Serial No. 78701838
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members to discounts, rebates
and bonuses in connection with
travel” in Int. Class 35;
“travel agency services, namely,
making reservations and
bookings for transportation” in
International Class 39;
“travel agency services, namely,
making reservations and
bookings for lodging” in Int.
Class 43;7
ELITE COLLECTION for “arranging travel tours;
travel agency services, namely,
making reservations and
bookings for transportation;
travel and tour information
services; travel, excursion and
cruise arrangement services” in
International Class 39;8
ELITE EXCURSIONS for “promoting the services of
others over the Internet by
administering a consumer
benefit program that entitles
customers to receive discounts
on travel and lodging” in
International Class 35;
“on-line travel agency services,
namely, making reservations and
bookings for transportation and
car rental by means of a global
computer network” in
International Class 39;
“on-line travel agency services,
namely, making reservations and
bookings for lodging, by means
of a global computer network”
in International Class 43;9

7 Registration No. 2902137 issued on November 9, 2004. No claim
is made to the word “Excursions” apart from the mark as shown.
This registration is owned by the Trilegiant Corporation.

8 Registration No. 3030928 issued to Trans National Travel,
Inc. on the Supplemental Register on December 13, 2005.

9 Registration No. 3064055 issued to the Trilegiant Corporation
on February 28, 2006. No claim is made to the word “Excursions”
apart from the mark as shown.
Serial No. 78701838
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ELITE TRAVELER for “travel agency services,
namely, making reservations and
bookings for transportation” in
international class 39;
“travel agency services, namely,
making reservations and booking
for temporary lodging; travel
agency services, namely, making
reservations and bookings for
restaurants and meals” in
international class 43.10

for “administering a consumer
benefit program which entitles
members to discounts, rebates
and bonuses in connection with
travel; and promoting the
services of others over the
Internet by administering a
consumer benefit program that
entitles customers to receive
discounts on travel and
lodging” in Int. Class 35;
“travel agency services, namely,
making reservations and
bookings for transportation;
and on-line travel agency
services, namely, making
reservations and bookings for
transportation and car rental
by means of a global computer
network” in Int. Class 39;
“travel agency services, namely,
making reservations and
bookings for lodging; and on-
line travel agency services,
namely, making reservations and
bookings for lodging, by means
of a global computer network”
in International Class 43;11

10 Registration No. 3070069 issued to American Express on March
21, 2006 under Section 2(f) of the Act.

11 Registration No. 3151631 issued to the Trilegiant
Corporation on October 3, 2006. No claim is made to the word
“Excursions” apart from the mark as shown.

Serial No. 78701838
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The information placed into the record by applicant
shows that over the years a large number of manufacturers,
merchants and service providers have adopted the word “Elite”
as part of their source-identifiers. Much as one might
conclude from a dictionary entry, the intention of these mark
owners is to suggest that the involved goods or services are
directed to “the best of the group.”
Based upon the results of its TESS search report,
applicant focuses upon the number and nature of similar marks
registered in International Class 39 – in connection with
services rendered in transporting people or goods from one
place to another.
With an eye toward the marks enumerated above, all
beginning with the word “Elite,” applicant argues that the
word “Elite” is extremely weak in the field of travel
agencies and chartering operations. Hence, applicant
concludes that consumers are forced to look to other elements
in these marks – including merely descriptive and generic
matter – in order to distinguish among the various sources of
“Elite” travel-related services.
However, terms like “Aviation,” “Island,” “Excursions,”
etc., are not as similar to “Yacht Charters” as is “Cruises.”
Furthermore, live registrations do not prove that the marks
Serial No. 78701838
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are in use, and hence, there is no way an assessment can be
made as to what, if any, impact those marks may have made in
the marketplace. See Seabrook Foods, Inc. v. Bar-Well Foods,
Limited, 568 F.2d 1342, 196 USPQ 289 (CCPA 1977).
Furthermore, as noted by the Trademark Examining Attorney,
even weak marks are entitled to protection from confusion
with similar marks for closely-related services. Hollister
Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976).
The marks
We turn next to the du Pont factor focusing on the
similarities or dissimilarities between applicant’s mark and
registrant’s cited mark as to appearance, sound, connotation
and commercial impression. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant argues that the Trademark Examining Attorney
has improperly dissected the involved marks, focusing only on
the common word “Elite,” and thereby failing to consider the
other distinguishing characteristics of the respective marks.
See Shen Manufacturing Co. Inc. v. The Ritz Hotel Ltd,
393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004) [overturning
finding of likelihood of confusion determination between RITZ
and THE RITZ KIDS inasmuch as the board had improperly
Serial No. 78701838
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dissected the marks, focusing only on the term “Ritz”].
Accordingly, applicant asserts that there is no confusing
similarity when applicant’s mark ELITE CRUISES and the cited
mark ELITE YACHT CHARTERS are compared in their entireties.
The Trademark Examining Attorney contends that the
term “Elite” is the dominant feature of applicant’s mark.
Even if this component of registrant’s mark is determined
to be highly suggestive and used by many service
providers, we must still consider the similarity or
dissimilarity of the marks when viewed in their entireties,
and “there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of the mark, provided [that] the ultimate conclusion
rests on consideration of the marks in their entireties.” In
re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985).
The significance of the term “Elite” as the dominant
element of applicant’s mark is further reinforced by its
location as the first word of the marks. Presto Products
Inc. v. Nice-Pak Products, Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) [“it is often the first part of a mark which is most
likely to be impressed upon the mind of a purchaser and
remembered”]. See also Palm Bay Imports, 73 USPQ2d at 1692
Serial No. 78701838
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[“Vueve” is the most prominent part of the mark VUEVE
CLICQUOT because “vueve” is the first word in the mark and
the first word to appear on the label]; Century 21 Real
Estate Corp. v. Century Life of America, 970 F2d 874,
23 USPQ2d 1698, 1701 (Fed. Cir. 1992) [upon encountering the
marks, consumers must first notice the identical lead word,
“Century”].
Applicant is correct that the cited mark is three words
while its mark is only two words. This creates a minor
dissimilarity in appearance and sound. However, the
Trademark Examining Attorney correctly argues that both marks
consist of the leading word, “Elite,” followed by merely
descriptive wording that suggests “leisure time spent on a
boat, whether it is a cruise ship or a smaller vessel.”
Hence, the Trademark Examining Attorney concludes that this
creates a similarity in connotation and commercial
impression.
On the other hand, applicant argues that the term
“Cruises” and the term “Yacht Charters” have different
connotations and mental impressions associated with each of
them. That is, applicant argues that while the term
“Cruises” “connotes a large capacity commercial cruise
liner”, the term “Yacht Charters” “connotes the
Serial No. 78701838
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leasing/renting of an entire privately owned/operated
luxury boat.”
[T]he term CRUISES actually conveys the
concept of a vacation aboard a large capacity,
mass-market, non-exclusive access cruise
liner, whereas the term YACHT CHARTERS
conveys the concept of leasing a luxury,
limited access boat to provide a very private
and intimate travel experience. The
charter[er] of a YACHT generally has control
over the itinerary, schedule, meal times,
etc., onboard the chartered boat.”

Furthermore, the phrase YACHT CHARTERS is
associated with a luxury boat accessible only
to a very small and elite segment of the
wealthy who can afford the large sums of
money associated with chartering an entire
luxury boat, whereas the term CRUISES is
associated with the purchase of a single
berth by an average consumer aboard a large
passenger ship (as opposed to a boat) with
hundreds of strangers, a pre-determined
itinerary, fixed time schedules and meal
times, etc. over which such purchaser has
absolutely no influence.

Reflecting on the dictionary definition of the word
“cruise” as “a sea voyage for pleasure,” we find that
applicant’s mark has a broader connotation than applicant
argues. While many in the travel and hospitality industry
may associate “cruise” with the purchase of a single berth by
an average consumer on a large capacity, mass-market,
commercial passenger ship, we construe it as any sea voyage
for pleasure, and that this could well overlap with the
meaning of a “yacht charter.” While this latter term often
Serial No. 78701838
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involves the hiring or leasing of an entire vessel, it is
still being used in connection with a pleasure cruise.
Accordingly, we find that in spite of the minor
dissimilarities in sound and appearance, the mark are
highly similar as to connotations and commercial impressions,
and this du Pont factor favors the position of the Trademark
Examining Attorney.
The services
We turn then to a consideration of registrant’s and
applicant’s services. In order to support a finding of
likelihood of confusion, it is not necessary for the goods or
services of the parties to be similar or competitive, or even
that they move in the same channels of trade. It is
sufficient that the respective goods or services of the
parties are related in some manner, and/or that the
conditions and activities surrounding the marketing of the
goods or services are such that they would or could be
encountered by the same persons under circumstances that
could, because of the similarity of the marks, give rise to
the mistaken belief that they originate from the same
producer. In re International Telephone & Telegraph Corp.,
197 USPQ 910, 911 (TTAB 1978).
Serial No. 78701838
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Moreover, we must decide the question of likelihood of
confusion based upon the services as they are specified in
the instant application for registration, and the involved
registration, rather than upon what applicant’s submissions
during this ex parte prosecution attempt to show those
services to be. See Canadian Imperial Bank of Commerce,
National Association v. Wells Fargo Bank, 811 F.2d 1490,
1 USPQ2d 1813 (Fed. Cir. 1987); and CBS, Inc. v. Morrow,
708 F.2d 1579, 218 USPQ 198 (Fed. Cir. 1983).
Applicant is correct in arguing that the relatedness of
the respective services herein cannot be presumed merely
because the services represented by the marks fall into the
same broad category. However, in considering registrant’s
recitation of services, it seems that applicant would have us
read “arranging travel tours and chartering yachts” as
“arranging travel tours, namely chartering yachts”12 –
arguing, as a result, that registrant’s cited services are
not even remotely related to the services provided by
applicant.
We disagree, viewing the conjunctive term “and” as
separating out related, but somewhat different, travel

12 Characterized by applicant as “chartering a multi-million
dollar yacht and arranging tours associated therewith … ”
Applicant’s appeal brief at 8 – 9.
Serial No. 78701838
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services. While it stands to reason that the primary focus
of registrant’s services is chartering yachts, we cannot
interpret the leading phrase in its recitation of services in
a way that renders it meaningless. Hence, we find that the
ordinary meaning of the phrase “arranging travel tours” is
totally without restriction as to the type of tours. This
phrase could well include other pleasure cruises, land
excursions, including sleeping accommodations and ground
transportation, etc. While there may well be a conceptual
difference in the amount of planning and effort involved in
“arranging” a tour versus that of “booking” a reservation,
nonetheless, we conclude that registrant could well be
providing services not that dissimilar from applicant’s range
of travel booking services.
As to naming the types of services connected with
vessels plying the waters, the dictionary definition of
“cruise” is “a sea voyage for pleasure.” Furthermore, among
the ninety hits from its Google search engine (that applicant
placed into the record) for the words “yacht charter,” were
websites discussing whale-watching and harbor tours, diving
excursions, party cruises available by the hour, for
weddings, anniversaries, bar mitzvahs, “sweet-16” or other
types of on-board parties. While it is true that many of
Serial No. 78701838
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these vendors are touting expensive yacht charters for a
week or even longer, registrant’s recitation of services
is not limited to such.
This conclusion is also borne out by two Internet
searches that applicant conducted – one directed to the two
words “yacht” and “charter” and the other to the word
“cruises.” We note the variations on the word “cruise”
within the “yacht charter” web pages identified by
applicant in Appendix A attached to its response of
November 11, 2007:
• “All-inclusive private cruises”
http://www.caribbeancruisingvacation.com/;
• “luxury dinner cruises,”
http://www.windridgeyachts.com/;
• “vacation cruises,” http://www.latigo.net/
• “Cruising destinations”; “on Jamal Charters best in
Alaska cruises”; “cruising at its best”; “Alaska
cruising experience”; “a private yacht cruise”
http://www.yachtchartersalaska.com/;
• “yacht charter cruising vacations”; “cruising grounds of
the British Virgin Islands” www.yachtpromenade.com/;
and
• “cruise the calm waters of Fort Lauderdale”; “FT.
Lauderdale Riverfront Cruises,”
http://www.anticipation.com/.

Similarly while applicant paints a sharply
contrasting picture between ordinary middle-class
consumers being herded into tiny cabins aboard large
passenger ships, and millionaires luxuriating on smaller
Serial No. 78701838
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boats, applicant’s own evidence does not always suggest
such a clear distinction. Its own web page says that “we
have access to every ship (large or small).” Likewise, in
Appendix B, attached to applicant’s response of November
11, 2007, one of the vendors listed on a “cruises” web
page that specializes in chartering smaller ships for
cruises, says that “you don’t have to be a millionaire to
vacation like one.” http://smallshipcruises.com/.
Accordingly, inasmuch as it is not critical to our
determination that the respective services be identical or
competitive, we do find a definite relationship between the
services recited by registrant and those recited by
applicant, and this du Pont factor favors the position taken
by the Trademark Examining Attorney
The channels of trade
Applicant argues from its Internet searches that
inasmuch as the “yacht charter” search elicited information
related to yachts and not mass marketed cruises/travel and
vice versa, this supports the conclusion that these are very
distinct and separate streams of commerce, directed to two
entirely distinct and separate classes of consumers.
However, as seen above, while the extremes as described by
applicant are quite far removed from each other, we also see
Serial No. 78701838
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an overlap in the form of party cruises on chartered yachts,
and hence, conclude there is some overlap in channels of
trade and in classes of consumers.
The conditions of sale
As noted by the Trademark Examining Attorney, even if we
were to conclude from the evidence of record that many of
registrant’s consumers comprise a sophisticated class of
purchasers, we find that even purchasers who closely study
and scrutinize an offer of services may well not be immune
from source confusion if similar marks are used in
connection with closely-related services. In re Decombe,
9 USPQ2d 1812 (TTAB 1988); and In re Pellerin Milnor Corp.,
221 USPQ 558 (TTAB 1983).
Conclusion
Accordingly, in spite of the sophistication of many of
registrant’s customers, we find that consumers familiar with
ELITE YACHT CHARTERS services will mistakenly believe that
ELITE CRUISES services emanate from the same source.
Decision: The refusal to register under Section 2(d) of
the Lanham Act is hereby affirmed.