John S. Hendricks

Trademark Trial and Appeal Board

May 16, 2006

No. 78206219 (T.T.A.B. May. 16, 2006)

Mailed:
May 16, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re John S. Hendricks
________

Serial Nos. 78206219 and 76487280
_______

Anthony V. Lupo and Jennifer L. Myron of Arent Fox PLLC
for John S. Hendricks.

Janice L. McMorrow, Trademark Examining Attorney, Law
Office 115 (Tomas V. Vlcek, Managing Attorney)
_______

Before Quinn, Grendel and Walsh, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:
Applicant’s appeals in application Serial Nos.
78206219 and 76487280 are hereby consolidated and shall be
decided in this single opinion.
In application Serial No. 78206219 (hereinafter ‘219),
applicant seeks registration on the Principal Register of
the mark PALISADE (in standard character (typed) form) for
services recited in the registration, as amended, as
THIS OPINION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser. Nos. 78206219 and 76487280
2
“hotels; resort hotels; inns,” in International Class 43.1
In Serial No. 76487280 (hereinafter ‘280), applicant seeks
registration on the Principal Register of the mark depicted
below for the same Class 43 services, i.e., “hotels; resort
hotels; inns.”2

1 This application was filed on January 23, 2003, and is based on
applicant’s asserted bona fide intention to use the mark in
commerce. Trademark Act Section 1(b), 15 U.S.C. §1051(b). As
originally filed, the recitation of services in the application
was “restaurants; hotels; resort hotels; inns” in Class 43, and
“health spa services” in Class 44. In his response to the first
Office action (in which the Trademark Examining Attorney issued
the Section 2(d) refusal at issue in this appeal), applicant
deleted “restaurants” from the Class 43 recitation of services.
The Class 44 “health spa services” subsequently were divided out,
at applicant’s request, into the child application Serial No.
78975702; the child application is not at issue herein.

2 This application was filed on January 31, 2003, and also is
based on applicant’s asserted bona fide intention to use the mark
in commerce under Trademark Act Section 1(b). The original
recitation of services in this application did not include
“restaurants” as in the ‘219 application, but it did include the
Class 44 “health spa services.” The Class 44 services
subsequently were divided out, at applicant’s request, into child
application Serial No. 76977134; the child application is not at
issue herein.

Ser. Nos. 78206219 and 76487280
3
In each application, the Trademark Examining Attorney
has issued a final refusal to register on the ground that
applicant’s mark, as used in connection with applicant’s
recited services, so resembles the mark PALISADE,
previously registered (in standard character form) for
services recited in the registration as “restaurant
services,”3 as to be likely to cause confusion, to cause
mistake, or to deceive. Trademark Act Section 2(d), 15
U.S.C. §1052(d).
Applicant has appealed the final refusal in each case.
Applicant and the Trademark Examining Attorney filed main
appeal briefs in each case; applicant did not file a reply
brief in either case, nor did applicant request an oral
hearing. We affirm the refusal to register in each case.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.

3 Registration No. 1732203, issued November 10, 1992, renewed.
Affidavits under Trademark Act Sections 8 and 15 accepted and
acknowledged. The “restaurant services” recited in the
registration are classified in the registration in International
Class 42, the class in which such services were classified at the
time the registration was issued. Such services now are
classified in Class 43.
Ser. Nos. 78206219 and 76487280
4
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003); In re Dixie Restaurants Inc., 105 F.3d
1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor requires us to determine
whether each of applicant’s marks and the cited registered
mark are similar or dissimilar when compared in their
entireties in terms of appearance, sound, connotation and
commercial impression. 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
that confusion as to the source of the services offered
under the respective marks is likely to result. The focus
is on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although
the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
Ser. Nos. 78206219 and 76487280
5
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985).
We find that applicant’s standard character mark
PALISADE (in the ‘219 application) is identical to the
cited registered mark, PALISADE. We also find that
applicant’s PALISADE and design mark (in the ‘280
application) is highly similar to the cited registered
mark. The cited registered mark and applicant’s PALISADE
and design mark are identical to the extent that PALISADE
appears prominently in both; applicant has merely added a
design element. The dominant feature of applicant’s
PALISADE and design mark is the word PALISADE, and it is
this feature of the mark which commands greater weight in
our comparison of the marks. See In re National Data
Corp., supra. The word PALISADE dominates the commercial
impression of applicant’s design mark because it appears in
large, bold lettering. The design element of the mark
appears to be a highly stylized representation of a
palisade,4 which merely reinforces the meaning and
significance of the word PALISADE in the mark. Moreover,

4 We take judicial notice that “palisade” is defined, in
pertinent part, as “a line of lofty steep cliffs, usually along a
river.” The American Heritage® Dictionary of the English
Language (4th ed. 2000). The Board may take judicial notice of
dictionary definitions. See University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. Nos. 78206219 and 76487280
6
the word PALISADE dominates this mark because it is the
portion of the mark which is capable of being verbalized by
purchasers. See In re Appetito Provisions Co. Inc., 3
USPQ2d 1553, 1554 (TTAB 1987).
For these reasons, we find that applicant’s ‘219
standard character mark is identical to the cited
registered mark, and that applicant’s ‘280 design mark is
highly similar to the cited registered mark. In both
cases, the first du Pont factor weighs heavily in favor of
a finding of likelihood of confusion. Applicant has not
contended otherwise.
We also find that PALISADE is a strong, distinctive
mark as applied to the services recited in the cited
registration, and that it therefore is entitled to a broad
scope of protection. We reject applicant’s contention to
the contrary. The numerous third-party registrations of
PALISADE marks made of record by applicant are not
probative evidence under the sixth du Pont factor (“the
number and nature of similar marks in use on similar goods
[or services]”). See Olde Tyme Foods Inc. v. Roundy’s
Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir. 1992).
Moreover, none of these registrations covers the services
at issue herein. Likewise, applicant’s Internet evidence
of third party uses of PALISADE does not support
Ser. Nos. 78206219 and 76487280
7
applicant’s case because, with one exception, all of these
instances of use are in connection with goods and services
far afield from the restaurant and hotel services at issue
herein. The only evidence of third-party use of PALISADE
as a mark in the hospitality industry pertains to a hotel
in Sydney, Australia; this foreign use is not probative
under the sixth du Pont factor, and is de minimis in any
event. We find that the sixth du Pont factor weighs in
favor of a finding of likelihood of confusion.
We turn next to the second du Pont factor, i.e., the
similarity or dissimilarity of the services as recited in
the applications and in the registration, respectively. It
is settled that it is not necessary that the respective
services be identical or even competitive in order to
support a finding of likelihood of confusion. That is, the
issue is not whether consumers would confuse the services
themselves, but rather whether they would be confused as to
the source of the services. It is sufficient that the
services be related in some manner, or that the
circumstances surrounding their use be such that they would
be likely to be encountered by the same persons in
situations that would give rise, because of the marks used
thereon, to a mistaken belief that they originate from or
are in some way associated with the same source or that
Ser. Nos. 78206219 and 76487280
8
there is an association or connection between the sources
of the respective services. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
Moreover, it is settled that the greater the degree of
similarity between the applicant’s mark and the cited
registered mark, the lesser the degree of similarity
between the applicant’s goods or services and the
registrant’s goods or services that is required to support
a finding of likelihood of confusion. Where the
applicant’s mark is identical to the registrant’s mark, as
it is in this case, there need be only a viable
relationship between the respective goods in order to find
that a likelihood of confusion exists. See In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687 (Fed. Cir. 1993); In re
Opus One Inc., 60 USPQ2d 1812, 1815 (TTAB 2001); and In re
Concordia International Forwarding Corp., 222 USPQ 355
(TTAB 1983).
Applying these principles in the present case, we find
that the “restaurant services” recited in the cited
registration are identical in part, and otherwise similar
and related, to the services recited in each of applicant’s
Ser. Nos. 78206219 and 76487280
9
applications, i.e., “hotels; resort hotels; inns.” We take
judicial notice that one definition of the word “inn” is “a
tavern or restaurant.” The American Heritage® Dictionary
of the English Language (4th ed. 2000). To that extent,
applicant’s services (which include “inns”) are identical
to the restaurant services recited in the cited
registration.
The Trademark Examining Attorney also has made of
record Internet website printouts from at least five
different establishments which offer hotel and restaurant
services in the United States under a single mark. See,
for example, the websites of The Panama Hotel & Restaurant
(San Rafael, California); The Villa Inn-Restaurant-Spa
(Indianapolis, Indiana); Montecito Inn Hotel and Restaurant
(Santa Barbara, California); Riverfront Lodge Hotel &
Restaurant (Boardman, Oregon); and Peerless Hotel and
Restaurant (Ashland, Oregon). Also of record are twenty-
four third-party registrations which include in their
recitations of services both restaurant services and hotel
services. Although such registrations are not evidence
that the marks shown therein are in use or that the public
is familiar with them, they nonetheless have probative
value to the extent that they serve to suggest that the
goods listed therein are of a kind which may emanate from a
Ser. Nos. 78206219 and 76487280
10
single source under a single mark. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988).
Applicant does not dispute that hotels often offer
restaurant services as well as lodging services. However,
applicant has made of record approximately fifteen
printouts from Internet websites of hotels which offer
their restaurant services under a name other than that of
the hotel. Examples are “Citronelle” at the Latham Hotel
in Washington, D.C.; “Melrose Restaurant” at the Park Hyatt
Hotel in Washington, D.C.; “Café 15” at the Sofitel
Lafayette Square Hotel in Washington, D.C.; and “Maxfield’s
Restaurant” at the Palace Hotel in San Francisco. We have
considered this evidence, but we cannot conclude therefrom
that hotels always or necessarily offer their restaurant
services under separate marks; the Trademark Examining
Attorney has submitted significant and persuasive evidence
to the contrary. We cannot help but note as well that
applicant itself, in its ‘219 application as originally
filed, stated its bona fide intention to use the PALISADE
mark in connection with “restaurants,” as well as with
“hotels; resort hotels; inns.”
Based on this evidence and for these reasons, we find
that purchasers encountering hotel services and restaurant
Ser. Nos. 78206219 and 76487280
11
services offered under the identical or highly similar
marks at issue herein are likely to assume that a source or
other connection exists. We note that the Board has
reached a similar conclusion in at least two previous
reported cases, i.e., In re The Summit Hotel Corporation,
220 USPQ 926 (TTAB 1983), and Bonaventure Associates v.
Westin Hotel Company, 218 USPQ 537 (TTAB 1983).5 The second
du Pont factor accordingly weighs in favor of a finding of
likelihood of confusion.
We also find, under the third du Pont factor, that
restaurant services, as recited in the cited registration,
and hotel, resort hotel and inn services, as recited in
applicant’s applications, are marketed in the same trade
channels to the same classes of purchasers. Applicant’s
argument that applicant and registrant are or will be
offering their respective services in different geographic
areas of the country is unavailing. Neither the cited
registration nor applicant’s applications are
geographically restricted, and they thus must be presumed
to be nationwide in scope. Any current actual geographical
separation between applicant and registrant is not

5 We reject applicant’s unsupported and obviously erroneous
contention that these cases are not citable as precedential
authority of the Board.

Ser. Nos. 78206219 and 76487280
12
pertinent in this case. The third du Pont factor weighs in
favor of a finding of likelihood of confusion.
We also find that the purchasers of the respective
services include ordinary consumers who would not exercise
more than ordinary care and sophistication in purchasing
the services. The fourth du Pont factor weighs in favor of
a finding of likelihood of confusion.
Finally, we note that applicant cites In re Four
Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071 (Fed.
Cir. 1993). As applicant acknowledges, however, in that
case there was a consent agreement between the applicant
and the owner of the cited registration, a fact to which
the court gave great if not dispositive weight. No such
consent agreement is of record in the present case, and the
tenth du Pont factor (the parties’ market interface,
including any consent agreements) accordingly is not
pertinent herein.
Weighing all of the evidence of record as it pertains
to the du Pont likelihood of confusion factors, we conclude
that a likelihood of confusion exists and that registration
of each of applicant’s marks accordingly is barred by
Trademark Act Section 2(d). To the extent that any doubts
might exist as to the correctness of this conclusion, we
resolve such doubts against applicant. See In re Shell Oil
Ser. Nos. 78206219 and 76487280
13
Co., supra; In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840,
6 USPQ2d 1025 (Fed. Cir. 1988); and In re Martin’s Famous
Pastry Shoppe, Inc., supra.

Decision: The refusal to register in application
Serial No. 78206219 is affirmed. The refusal to register
in application Serial No. 76487280 is affirmed.