Pleasant Travel Servicev.Marisol, LLC

Trademark Trial and Appeal Board

May 27, 2009

No. 92044469 (T.T.A.B. May. 27, 2009)

Oral Hearing: March 31, 2009 Mailed: May 27, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Pleasant Travel Service
v.
Marisol, LLC
_____

Cancellation No. 92044469
_____

Elise Owens Thorn, Esq. of Clay Chapman Crumpton Iwamura &
Pulice for Pleasant Travel Service

John Joseph Hall, Esq. for Marisol, LLC
______

Before Seeherman, Wellington, and Ritchie,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:

Pleasant Travel Service has petitioned to cancel
Registration No. 2938695, owned by Marisol, LLC, for the
mark DON THE BEACHCOMBER for “restaurant and bar services”
in International Class 43.1
In the original petition for cancellation, petitioner
alleged that respondent’s mark is likely to be confused with

1 The registration issued on April 5, 2005, based on an
application (Serial No. 76536351) filed on July 31, 2003. A
statement of use was filed on December 1, 2004, asserting a date
of first use anywhere and in commerce on October 22, 2004.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92044469
2
petitioner’s marks DON THE BEACHCOMBER and BEACHCOMBERS2
because both are used for restaurant and bar services, and
because petitioner has priority of use.3 Petitioner
subsequently amended the complaint to allege that “the term
for which registration has been obtained, has not been used
as a service mark” and that respondent’s use of the
registered mark is ornamental and has not become distinctive
as an indication of the source of respondent’s services.4
Respondent denied the pertinent allegations of the
petition for cancellation. Respondent does assert in its
answer that “if petitioner had ever used the words DON THE
BEACHCOMBER or BEACHCOMBER’S for restaurant and bar
services, that petitioner had abandoned the use of said
words...before [respondent’s] filing date of July 31, 2003
of the application resulting in [the subject registration].”

2 In the petition for cancellation, as amended, petitioner
asserts rights in the mark BEACHCOMBER’S (with an apostrophe,
thus indicating a possessive and not plural form). However, the
parties clearly tried and briefed this proceeding based on
petitioner’s asserted rights in the mark BEACHCOMBERS.
Accordingly, the Board has deemed the petition for cancellation
to be amended to reflect that, under FRCP 15(b).
3 As discussed infra, the Board has deemed the petition for
cancellation to be amended under FRCP 15(b) to include an
allegation that petitioner also uses its marks in connection with
“banquet” and “food and beverage venue” services.
4 Amended complaint filed on August 31, 2008, pursuant to a Board
order issued on the same date. The complaint, as amended, also
alleges that respondent did not have a bona fide intent to use
the mark in commerce when it filed its statement of use; that
respondent “was not (and is not now) the rightful owner of the
registered mark.” However, petitioner did not pursue these
grounds or allegations in its trial brief. Thus, we deem them to
have been waived.
Cancellation No. 92044469
3
Both parties filed briefs. An oral hearing was
requested by respondent and held on March 31, 2009.
The Record
The record includes the pleadings and, under Rule
2.122(b), the subject registration file.
Petitioner submitted the deposition testimony, with
exhibits, of Edward J. Hogan, petitioner’s CEO and chairman,
and Glenn P. Hogan, petitioner’s director and vice-
president.
Petitioner filed a notice of reliance (on January 4,
2008) during its testimony period identifying the following
(as exhibits 60-80): (1) excerpts of the deposition of
respondent’s designated witnesses, taken pursuant to Rule
30(b)(6), and exhibits thereto; (2) printouts from Hawaiian
Airline’s in-flight magazine, Hana Hou, from various months
in 2007; and (3) copies of the State of Hawaii Trade Name
Registration for “Beachcombers” and “Don the Beachcomber.”
However, all of the exhibits were introduced on CD-Rom. By
amendment effective August 31, 2007, the Board deleted
Trademark Rule 2.126(b) which gave parties the option of
making submissions to the Board in CD-Rom form. Trademark
Rule 2.126(a)(6) makes clear that "[e]xhibits pertaining to
a paper submission must be filed on paper and comply with
the requirements for a paper submission." Because
petitioner’s exhibits 60-80 were not filed on paper as
Cancellation No. 92044469
4
required under the operative Trademark Rule, they have not
be considered in this decision.5
Petitioner filed a second notice of reliance during its
rebuttal testimony period, identifying certain portions of
the deposition of its Rule 30(b)(6) witness, Edward J.
Hogan, pursuant to Rule 2.120(j)(4).
Respondent submitted the deposition testimony, and
exhibits thereto, of Arthur K. Snyder, respondent’s manager,
and Ryan Anderson, a bartender who worked for respondent.
During its testimony period, respondent filed several
notices of reliance that, taken together, identify the
following: (1) the Rule 30(b)(6) discovery deposition of
petitioner’s witness, Glenn Hogan; (2) certain portions of
the Rule 30(b)(6) discovery deposition of petitioner’s
witness, Edward Hogan; (3) copies of petitioner’s responses
to various discovery requests served by respondent; and (4)
copies of pages from selected Hawaiian telephone
directories.
Motion to Amend Pleadings to Conform to Evidence
On April 8, 2009, after the oral hearing, petitioner
moved to amend the pleadings to conform to the evidence and

5 Even if we were to consider the materials identified in the
notice of reliance it would not change the outcome of our
decision. We also note that respondent raised objections to two
of the exhibits identified in the notice of reliance. Because of
our decision to not consider these exhibits for the reasons
mentioned, the objections are moot.
Cancellation No. 92044469
5
specifically to assert rights in the marks for banquet
services. Respondent has contested the motion.
In its motion, petitioner acknowledges that in the
petition for cancellation, as amended, it asserts rights in
the marks DON THE BEACHCOMBER and BEACHCOMBERS only with
respect to “restaurant and bar” services. However,
petitioner points to the allegation that it “has priority of
use” and argues that, based on the discovery and evidence
relied on in this proceeding, respondent “had actual notice”
that the priority claim included “use as a banquet event
facility...in January 2003.” Brief (in support of motion),
p. 4. And, pointing to certain evidence of record and other
matters not in the record, petitioner requests that “[t]o
the extent the Board does not consider the allegations in
the petition to have fairly notified [respondent] that the
claims included Petitioner’s banquet event use,...the
pleadings be considered as having been amended to conform to
the evidence.”6
Petitioner’s motion essentially stems from respondent’s
reliance on (and interpretation of) certain admissions made
by petitioner in response to respondent’s requests for

6 The parties are advised that all materials submitted in
connection with the motion are not considered of record (for
final decision) and were only considered for purposes of deciding
the instant motion.

Cancellation No. 92044469
6
admissions. Specifically, the admission requests which
petitioner “admitted” include:
38. During the period January, 1993 to August 1, 2003,
no restaurant owned by petitioner used the words DON THE
BEACHCOMBER on a menu for restaurant services.

39. During the period January, 1993 to August 1, 2003,
no bar owned by petitioner used the words DON THE
BEACHCOMBER on a menu for restaurant services.

155. During all of the period January, 1993 to November,
2003, there was no restaurant or bar operated by Pleasant
Travel Service operating under the words DON THE
BEACHCOMBER.

During the oral hearing, it became apparent that
respondent was construing the term “restaurant” and “bar” as
including any “banquet” services or events. Petitioner, on
the other hand, argued at oral hearing that it answered the
admission request truthfully and that it does not consider
“restaurant and bar” as encompassing banquet events or
services. Petitioner asserted that, in spite of its
admissions, it was using the mark DON THE BEACHCOMBER in
connection with banquet services during the specified time
period.
Fed. R. Civ. P. 15(b), as made applicable by Trademark
Rule 2.116(a), provides in pertinent part:
Amendments to Conform to the Evidence. When issues not
raised by the pleadings are tried by express or implied
consent of the parties, they shall be treated in all
respects as if they had been raised in the pleadings.
Such amendment of the pleadings as may be necessary to
cause them to conform to the evidence and to raise these
issues may be made upon motion of any party at any time
…. If evidence is objected to at the trial on the ground
that it is not within the issues made by the pleadings,
Cancellation No. 92044469
7
the court may allow the pleadings to be amended and shall
do so freely when the presentation of the merits of the
action will be subserved thereby and the objecting party
fails to satisfy the court that the admission of such
evidence would prejudice the party in maintaining the
party's action or defense upon the merits.

TBMP § 507.03(b) (2d ed. rev. 2004) further provides in
relevant portion that (footnotes omitted):
When issues not raised by the pleadings are tried by the
express or implied consent of the parties,... the Board
will treat them in all respects as if they had been
raised in the pleadings. Any amendment of the pleadings
necessary to cause them to conform to the evidence and to
raise the unpleaded issues may be made upon motion of any
party at any time …, but failure to so amend will not
affect the result of the trial of these issues. Implied
consent to the trial of an unpleaded issue can be found
only where the nonoffering party (1) raised no objection
to the introduction of evidence on the issue, and (2) was
fairly apprised that the evidence was being offered in
support of the issue.

Here, respondent did not object to petitioner’s
introduction of evidence purportedly showing use of DON THE
BEACHCOMBER in connection with banquet and other “food and
beverage venue” services. Furthermore, a review of the
record in this proceeding further reveals that respondent
was fairly apprised of petitioner’s reliance on banquet and
other “food and beverage venue” services in its attempt to
establish continued use and priority under the marks DON THE
BEACHCOMBER and BEACHCOMBERS. In particular, we note that
the testimony of Glenn Hogan, and exhibits thereto, contains
several references to petitioner’s banquet and “food and
beverage” venue services during the 1998-2003 time period.
Indeed, in its brief, respondent addressed several of the
Cancellation No. 92044469
8
exhibits to the G. Hogan deposition testimony that involved
banquet events. Rather than object to these services as
being beyond the scope of petitioner’s pleaded services,
respondent addressed them in substance:
Exhibits 48 and 49 are all limited to events taking place
at the Beachcombers restaurant and only Beachcombers
appears on all of these many exhibits.

[Brief, p. 40]

In view thereof, we find that the issue of whether
petitioner rendered banquet and “food and beverage” venue
services under its marks to have been tried by implied
consent of the parties. Accordingly, petitioner’s motion is
granted to the extent that the pleadings are amended to
include an allegation that petitioner used its marks in
connection with “banquet” and “food and beverage venue”
services, and that such allegation has been denied by
respondent. We would be remiss if we did not point out
that, although we find the issue of whether petitioner
rendered banquet and “food and beverage” services under its
marks to have been tried by the parties, this does not
necessarily mean that petitioner has proven the allegation.
We now turn to petitioner’s standing to bring this
cancellation and the substantive grounds for cancellation.
Standing
In order to establish standing, petitioner need not
plead nor prove what respondent terms “monetary detriment or
Cancellation No. 92044469
9
monetary damage to its reputation.” Brief, p. 49. Rather,
petitioner need only show that it has a “real interest” in
the outcome of this proceeding; that is, that it has a
direct and personal stake in the outcome of the proceeding.
See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); and Jewelers Vigilance
Committee, Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987). See also Lipton Industries,
Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). The purpose of requiring a “real interest” in
the proceeding is to prevent mere intermeddlers who do not
raise a real controversy from bringing proceedings before
the Board. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d
1023 (Fed. Cir. 1999).
We find that petitioner has standing to petition to
cancel inasmuch as it has used the marks DON THE BEACHCOMBER
and BEACHCOMBERS. Such use is discussed in further detail
below in the context of priority of use.
Respondent’s Use of the Mark DON THE BEACHCOMBER
Petitioner has pleaded that respondent’s use of the
registered mark is ornamental and has not become distinctive
as an indication of the source of respondent’s services. In
its brief, petitioner essentially argues that respondent
“made some limited use of DON THE BEACHCOMBER in a bar
called China Bar. Such ornamental use is not a sufficient
Cancellation No. 92044469
10
basis for the registration of a mark in the context of
operating one bar as another.” Brief, p. 24 (emphasis in
original). Petitioner offered some evidence in support of
the ground and contested respondent’s evidence of use of the
registered mark.
Initially, we note that petitioner does not allege that
respondent has abandoned its mark. And, although petitioner
does not cite the specific statutory ground for cancellation
here, we construe petitioner’s ground as that respondent
failed, as of the filing date of the statement of use in its
underlying application, to make proper trademark use in
commerce of DON THE BEACHCOMBER, as such use is defined
under Section 45 of the Act. This section of the Act
provides that a service mark is in “use in commerce” if (i)
the mark is used or displayed in the sale or advertising of
services and (ii) either the services are rendered “in
commerce,” or the services are rendered in more than one
state or in the United States and a foreign country and the
user is engaged in commerce in connection with the services.
Based on the record before us, we find that petitioner
has not established by a preponderance of the evidence that
respondent’s use of the registered mark, DON THE
BEACHCOMBER, was not proper use in commerce in connection
with the recited restaurant and bar services. To the
contrary, the deposition testimony of Messrs. Snyder and
Cancellation No. 92044469
11
Anderson, in combination with the exhibits thereto,
establish that respondent was using the mark DON THE
BEACHCOMBER in connection with restaurant and bar services
as of the filing date of the statement of use (on December
1, 2004). In particular, the evidence shows that respondent
operated a restaurant and bar under the name DON THE
BEACHCOMBER at a location within a hotel in Las Vegas from
October 2004 through August 2006. Snyder Test. Dep. 14:2,
41:24-42:10; Exhibits 2 [menu], 88-95 [photographs of
signage at restaurant and bar]. Although respondent’s
restaurant and bar services were located within an
establishment bearing a “China Bar” sign outside,
respondent’s signage within the establishment and the menus
used are sufficient for purposes of conveying to customers
that the restaurant and bar services were being rendered
under the mark DON THE BEACHCOMBER. And, although the
restaurant at this location closed in 2006, respondent has
since been looking to “find a location and to open up a
restaurant – bar/restaurant in the name of Don the
Beachcomber.” Snyder Test. Dep. 11:19-21; 49:10-15.
We now turn to petitioner’s second ground for
cancellation, namely, that it has priority and there is
likelihood of confusion between the parties’ respective
marks.
Cancellation No. 92044469
12
Priority
It is well settled that in the absence of any evidence
of earlier use, the earliest date upon which respondent may
rely is the filing date of its underlying application. See
Trademark Act Section 7(c), 15 U.S.C. §1057 (c). See also
Larami Corp. v. Talk to Me Programs, Inc., 36 USPQ2d 1840
(TTAB 1995). In this case, and as noted above, the
application that matured into the registration at issue
herein was accorded a filing date of July 31, 2003, and that
is the earliest date that respondent relies on for purposes
of priority.
To establish priority on a likelihood of confusion
claim brought under Trademark Act §2(d), a party must prove
that, vis-a-vis the other party, it owns “a mark or trade
name previously used in the United States … and not
abandoned….” Trademark Act Section 2, 15 U.S.C. §1052. A
party may establish its own prior proprietary rights in a
mark through ownership of a prior registration, actual use
or through use analogous to trademark use, such as use in
advertising brochures, trade publications, catalogues,
newspaper advertisements and Internet websites which create
a public awareness of the designation as a trademark
identifying the party as a source. See Trademark Act §§2(d)
and 45, 15 U.S.C. §§1052(d) and 1127. See also T.A.B.
Systems v. PacTel Teletrac, 77 F.3d 1372, 37 USPQ2d 1879
Cancellation No. 92044469
13
(Fed. Cir. 1996), vacating Pactel Teletrac v. T.A.B.
Systems, 32 USPQ2d 1668 (TTAB 1994).
Petitioner relies entirely on its pleaded common law
rights in the marks DON THE BEACHCOMBER and BEACHCOMBERS.
Thus, petitioner is responsible for not only proving that it
has rights in these marks, but also that it acquired rights
in the marks prior to July 31, 2003. In order to make a
determination as to what rights petitioner has established
in these marks, we take note of the following few facts
which do not appear to be in dispute.
Petitioner purchased the property called the Royal
Lahaina Resort (in Hawaii) in 1982, which included a
restaurant and bar named DON THE BEACHCOMBER. Sometime in
or about 1987 the name of the restaurant and bar was changed
to CHOPSTICKS. In 1993, the restaurant and bar was renamed
BEACHCOMBERS. In 1998, the restaurant and bar underwent
renovations which included closing the kitchen on the
premises (the kitchen facilities have remained closed). In
2002, a sign was placed outside the entrance to the facility
reading, “Don the Beachcomber,” and below this sign was
another sign, “Opening this Christmas.”
1. Petitioner’s Rights in the Mark DON THE BEACHCOMBER
In support of its alleged rights in the DON THE
BEACHCOMBER mark, petitioner argues that it never abandoned
Cancellation No. 92044469
14
the mark when the restaurant was renamed “Chopsticks” in
1987. In its brief (p. 20), it argues:
To the contrary, the evidence shows that Pleasant
valued the name and concept for the DON THE BEACHCOMBER
restaurant when it purchased the Royal Lahaina Resort.
It stored the furnishings and décor from the restaurant
and in fact used them in 1993 and changed the
restaurant’s name to BEACHCOMBERS. Any cessation in
use in the late 1990’s and into 2002 was due to a
myriad of factors, none of which indicate cessation of
use along with an intent not to resume use.

In its answer, respondent raised the affirmative
defense that petitioner abandoned any rights it may have had
in the mark DON THE BEACHCOMBER. Respondent argues this
point in its brief and notes the length of time from when
the original name DON THE BEACHCOMBER was changed in 1987 to
“Chopsticks” until petitioner asserts it began to use the
mark DON THE BEACHCOMBER again.
A defendant must establish two elements in order to
show that a plaintiff has abandoned his trademark: “[1] that
the plaintiff has ceased using the mark in dispute and [2]
that he has done so with an intent not to resume its use.”
Cumulus, 304 F.3d at 1174 (footnote omitted). For the
purposes of abandonment, the Lanham Act defines “use” as
“the bona fide use of such mark made in the ordinary course
of trade, and not made merely to reserve a right in a mark.”
15 U.S.C. § 1127. The Lanham Act directs that “[i]ntent not
to resume [use] may be inferred from circumstances.” Id. An
intent to resume use cannot be far-flung or indefinite;
Cancellation No. 92044469
15
rather there must be an intent “to resume use within the
reasonably foreseeable future,” Silverman v. CBS Inc., 870
F.2d 40, 46 (2d Cir.1989), and in the United States,
Imperial Tobacco Ltd. v. Philip Morris, Inc., 899 F.2d 1575,
1579 (Fed.Cir.1990). See also Grocery Outlet, Inc. v.
Albertson's, Inc., 497 F.3d 949, 951 (9th Cir.2007) (per
curiam) (finding “intent to resume use of the ... mark
within the reasonably foreseeable future during the short
period of alleged nonuse” prevented the mark from being
abandoned). “Nonuse for 3 consecutive years shall be prima
facie evidence of abandonment,” 15 U.S.C. § 1127, which
creates a “rebuttable presumption of intent not to resume
use.” Cumulus Media, Inc., 304 F.3d at 1174.
Based on the record before us, we find that a prima
facie case of abandonment has been established.
Specifically, for more than three consecutive years,
beginning with the re-naming of the restaurant in 1987,
petitioner did not use the mark DON THE BEACHCOMBER in
commerce in connection with restaurant or banquet services.
Furthermore, petitioner has not sufficiently rebutted the
prima facie presumption of abandonment with evidence that it
had an intent to resume use of the mark. We are not
persuaded by petitioner’s argument regarding the storage of
the restaurant décor and furnishings as demonstrating an
intent to resume use. Such décor and furnishings were not
Cancellation No. 92044469
16
shown to be specific to a DON THE BEACHCOMBER restaurant;
they could have been used with a restaurant having a
different name. Mr. Glenn Hogan was unable to state whether
the stored furnishings included an interior or exterior sign
bearing the mark. Accordingly, we find that petitioner
abandoned the DON THE BEACHCOMBER mark as of 1987 and cannot
rely on any use of the mark prior to that date for purposes
of establishing priority.
Having found that petitioner abandoned its DON THE
BEACHCOMBER mark in 1987, in order for petitioner to
establish its priority with respect to this mark, petitioner
must show that it used the mark subsequent to the
abandonment date and prior to respondent’s priority date of
July 31, 2003. In this regard, petitioner argues that it
offered banquet services under the DON THE BEACHCOMBER mark
prior to July 2003. However, the evidence does not support
petitioner’s claim. Rather, the evidence, including
invoices for these services, clearly indicates that
petitioner was rendering banquet services only under the
mark BEACHCOMBER or BEACHCOMBERS prior to that date.
Petitioner makes two other arguments for priority in
the mark DON THE BEACHCOMBER. First, it asserts that when
the restaurant was renamed BEACHCOMBERS in 1993 it was
perceived as “synonymous with” or as an “abbreviated form
of” DON THE BEACHCOMBER and that the restaurant was being
Cancellation No. 92044469
17
operated as such since that date. Second, petitioner
contends that it made “use analogous to trademark use,” all
prior to July 2003.
We can quickly discount the argument that use of the
BEACHCOMBERS mark was somehow “synonymous” with or an
abbreviated form of the DON THE BEACHCOMBER mark. First,
such a claim contradicts petitioner’s admission that “During
all of the period January, 1993 to November, 2003, there was
no restaurant or bar operated by Pleasant Travel Service
operating under the words DON THE BEACHCOMBER” (Admission
no. 155). Further, aside from the testimony of Mr. Glenn
Hogan that some customers equated the two names for the
restaurant, there is no evidence to support the conclusion
that consumers associated the marks in such a manner that
upon encountering one mark, they somehow perceived it as a
substitute for the other mark. As for Glenn Hogan’s
testimony, it is too vague (“we thought it was synonymous
and wanted everyone to feel that it was a friendly, first-
name basis, so to speak”) to establish that a substantial
portion of the consuming public regarded the two names as
synonymous. G. Hogan Test. Dep. 140:2-4.
We turn now to petitioner’s argument that it made use
analogous to trademark use prior to July 2003. Petitioner
relies heavily on its use of the sign “DON THE BEACHCOMBER”
that was placed in front of the restaurant prior to July,
Cancellation No. 92044469
18
2003; however, as acknowledged by petitioner, a smaller sign
immediately below read “opening this Christmas.” And, as
early as October of 2002, petitioner also advertised “Don
the Beachcomber’s Restaurant” on its website; again, after a
brief description of the restaurant the following appears in
parentheses, “opening soon.” Although Glenn Hogan testified
that these pre-opening advertisements were references to an
opening in late 2002 or early 2003, there is no evidence
indicating when exactly the “opening this Christmas” sign
was removed from the entrance or “opening soon” was deleted
from the website advertisement. The evidence also does not
support a finding that the restaurant or banquet facility
was operating under the mark DON THE BEACHCOMBER prior to
July 31, 2003. Thus, we construe the aforementioned
advertisements as simply pre-opening advertising.
Pre-opening advertising falls within the parameters of
“use analogous to trademark use.” Use analogous to
trademark use “is non-technical use of a trademark in
connection with the promotion or sale of a product under
circumstances which do not provide a basis for an
application to register, usually because the statutory
requirement for use on or in connection with the sale of
goods in commerce has not been met.” Shalom Children's Wear
Inc. v. In-Wear A/S, 26 USPQ2d 1516, 1519 (TTAB 1993). Use
analogous to trademark use is proven by advertising of
Cancellation No. 92044469
19
sufficient clarity and repetition to create the required
identification by a substantial portion of the public that
might be expected to purchase the service. T.A.B. Systems
v. PacTel Teletrac, 37 USPQ2d at 1883 (Fed. Cir. 1996). In
this case, there is insufficient evidence regarding the
extent or effect of petitioner's pre-opening advertising in
connection with the mark DON THE BEACHCOMBER. For example,
although we have the monthly number of “hits” (people
visiting petitioner’s Royal Lahaina Resort website), it
remains unclear how many people actually viewed the webpage
containing “Don the Beachcomber’s...(opening soon).”
Moreover, there is insufficient information to determine to
what extent the sign outside the facility was visible to
consumers, or the number of potential consumers who would
have had access to the sign. Therefore, petitioner has not
shown use analogous to trademark use prior to July 31, 2003.
In view of the above, we find that petitioner has not
established its priority in the mark DON THE BEACHCOMBER
vis-à-vis respondent’s registered mark. Accordingly, it
cannot prevail on a likelihood of confusion ground based on
any common law rights in that mark.
Petitioner’s Rights in the Mark BEACHCOMBERS
Petitioner has clearly established common law rights in
the mark BEACHCOMBERS in connection with restaurant and
banquet services since 1993. Mr. Glenn Hogan testified to
Cancellation No. 92044469
20
petitioner’s use of the mark BEACHCOMBERS for its restaurant
services since 1993 as well as to exhibits consisting of
telephone directories covering the years 1994-2001, 2003,
2006-2007 (G. Hogan Test. Dep., Exhibits Nos. 9-20),
Internet advertising (G. Hogan Test. Dep., Exhibits Nos. 24-
31), and menus (G. Hogan Test. Dep., Exhibits Nos. 34-36),
all identifying petitioner’s restaurant services under the
mark BEACHCOMBERS. The record further reflects that
petitioner’s banquet services, under the BEACHCOMBERS mark,
began as early as January 2003 (G. Hogan Test. Dep.,
Exhibits Nos. 47-49) and included providing the dining
facilities as well as buffet-service food for different
types of events and occasions. Any affirmative defense or
claim by respondent that petitioner abandoned this mark is
not supported by the evidence. Respondent does not argue
that a prima facie case of abandonment exists based on a
three-year consecutive period of non-use of this mark.
Moreover, petitioner has rebutted any presumption of
abandonment that may have arisen as a result of the
intermittent closures of its restaurant and/or kitchen
facilities during the years 1998 through 2003.
Specifically, Mr. Glenn Hogan testified that there were
temporary renovations of the facility during these years and
that the immediate downturn in tourism as a result of 9/11
Cancellation No. 92044469
21
terrorist attack caused petitioner to delay its reopening.
G. Hogan Test. Dep. 41:4-43:19.
Accordingly, we find petitioner has priority of use in
its mark, BEACHCOMBERS, for restaurant and banquet services
vis-à-vis respondent’s registered mark, DON THE BEACHCOMBER.
Likelihood of confusion
Our determination of likelihood of confusion under
Section 2(d) of the Lanham Act is based on an analysis of
all the facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973). Again, our likelihood of confusion analysis is
limited to petitioner’s mark, BEACHCOMBERS, for banquet and
restaurant services vis-à-vis respondent’s registered mark,
DON THE BEACHCOMBER, for restaurant and bar services. The
relevant du Pont factors in this proceeding are discussed
below.
We turn first to the similarity of the parties’
services and find them to be, in part, identical. Here,
petitioner has demonstrated common law rights in its mark in
connection with restaurant and banquet services, whereas the
subject registration covers restaurant and bar services. In
this regard, we take judicial notice of the definition of
the term banquet as, “A ceremonial dinner honoring a
Cancellation No. 92044469
22
particular guest or occasion.”7 Thus, even if we were to
focus solely on petitioner’s banquet services, we find them
to be essentially the same in nature to restaurant services.
Indeed, as the evidence shows, petitioner’s banquet services
include not only providing the actual venue for the meal,
but petitioner also is providing the food service, albeit
from a kitchen not on the immediate premises.
Because respondent’s recited services contain no
restrictions as to respondent’s channels of trade, we must
presume that they are marketed in all of the normal trade
channels for such services, and that the services are
available to all classes of purchasers. See Hewlett-Packard
Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001,
1004 (Fed. Cir. 2002); Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). Here, we find that the channels of trade
and the classes of purchasers for the parties' services, as
identified by respondent, and as proven by petitioner, are
identical or are overlapping. Inasmuch as the restaurant
services are identical, we must presume that these services

7 The American Heritage Dictionary of the English Language:
Fourth Edition. 2000. It is well settled that the Board may
take judicial notice of dictionary definitions. See, e.g.,
Hancock v. American Steel & Wire Co. of New Jersey, 203 F.2d 737,
97 USPQ 330, 332 (CCPA 1953); University of Notre Dame du Lac v.
J.C. Gourmet Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB
1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983); and
Marcal Paper Mills, Inc. v. American Can Co., 212 USPQ 852, 860
n.7 (TTAB 1981).
Cancellation No. 92044469
23
are offered to the same purchasers in the same trade
channels. And, in the case of banquet services versus
restaurant services, the consumers would be the same in that
they are the general public, who go to restaurants and who
attend or arrange for banquets for a special occasion.
These ordinary consumers of at least restaurant services
would be expected to exercise nothing more than ordinary
care in choosing the types of services offered by respondent
and petitioner. It also appears that based on the evidence
of record, both parties’ restaurant services cater to some
extent to tourists, and therefore would be the subject of
impulse visits. Finally, although consumers of banquet
services exercise a higher level of care in selecting a
source for said services inasmuch as a banquet requires
prior planning, there is the likelihood that attendees of
the banquet could on impulse go to respondent’s restaurant
because they had a positive experience at the banquet hall.
Accordingly, these du Pont factors weigh in favor of a
finding of likelihood of confusion.
We now turn our attention to the similarity or
dissimilarity of the parties’ marks. In considering the
marks, we initially note that when they are used in
connection with identical (or nearly so) services, and as we
have stated, petitioner’s banquet services are nearly
identical to restaurant and bar services, “the degree of
Cancellation No. 92044469
24
similarity [between the marks] necessary to support a
conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). See also, Schering-
Plough Healthcare Products Inc. v. Ing-Jing Huang, 84 USPQ2d
1323, 1325 (TTAB 2007); Jansen Enterprises Inc. v. Rind, 85
USPQ2d 1104, 1108 (TTAB 2007).
Under this du Pont factor, we look to the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
In this case, the average purchaser would include members of
the general public who go to restaurants, bars and banquets.
We begin our analysis by pointing out that respondent’s
mark, DON THE BEACHCOMBER, essentially incorporates
petitioner’s entire mark, BEACHCOMBERS. Likelihood of
confusion is often found where the entirety of one mark is
incorporated within another. The Wella Corp. v. California
Concept Corp., 558 F.2d 1019, 194 UPSQ 419, 422 (CCPA 1977)
(Holding that CALIFORNIA CONCEPT with a surfer design is
similar to CONCEPT for hair products, “[w]hen one
incorporates the entire arbitrary mark of another into a
composite mark, inclusion in the composite mark of a
significant, nonsuggestive element will not necessarily
preclude a likelihood of confusion”); Johnson Publishing Co.
v. International Development Ltd., 221 USPQ 155, 156 (TTAB
Cancellation No. 92044469
25
1982) (EBONY for cosmetics and EBONY DRUM for hairdressing
and conditioner). Furthermore, respondent’s use of the
plural form of BEACHCOMBER versus applicant’s use of the
singular form is not significant. Wilson v. Delaunay, 245
F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (“It is evident that
there is no material difference, in a trademark sense,
between the singular and plural forms of the word ‘Zombie’
and they will therefore be regarded here as the same mark”).
Respondent, however, argues that the term BEACHCOMBER
(or BEACHCOMBERS) is commonly used in connection with
restaurant services. Indeed, respondent contends that
petitioner’s mark is so weak that it should be accorded a
lesser degree of protection. Respondent’s argument is that
the common element, BEACHCOMBER(S), is so diluted as to
cause purchasers not to rely upon it as a source indicator,
but to look to other elements of BEACHCOMBER marks as a
means of distinguishing the source of the services. In
support, respondent submitted printouts from third-party
websites containing the term BEACHCOMBER(S) being used in
connection with restaurant services.8
Petitioner has objected to respondent’s aforementioned
evidence as “consist[ing] solely of printouts from the
Internet...[without] any evidence that the marks referred to
are actually in use.” Reply brief, p. 3

8 These exhibits were submitted with the Snyder deposition.
Cancellation No. 92044469
26
The website evidence does not persuade us that
petitioner's mark is weak. We acknowledge that the Board
has, in likelihood of confusion cases, given weight to
evidence of widespread and significant use by third parties
of marks containing elements in common with the involved
marks to demonstrate that confusion is not, in reality,
likely to occur. See, e.g., Miles Laboratories Inc. v.
Naturally Vitamin Supplements Inc., 1 USPQ2d 1445, 1462
(TTAB 1987). However, the evidence provided by respondent,
through the testimony of Mr. Snyder, is not sufficient to
show that there has been such widespread exposure to the
public. While the internet printouts are evidence of third-
party use of the term BEACHCOMBER(S), they are of limited
probative value, particularly since there is no information
as to the extent of exposure of the websites to the public
or the public's familiarity with them. See Sports Authority
Michigan Inc. v. PC Authority Inc., 63 USPQ2d 1782 (TTAB
2001). We further note that a significant number of the
websites identified by respondent involve restaurants
located in foreign countries. Accordingly, we cannot
ascertain the impact of the third-party uses on the public.
Even if we were to find that BEACHCOMBERS is a weak
mark and, as such, may be entitled to a narrower scope of
protection, the scope is still broad enough to prevent the
registration of a highly similar mark for identical or
Cancellation No. 92044469
27
closely related services. See King Candy Co. v. Eunice
King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA
1974) (likelihood of confusion is to be avoided as much
between weak marks as between strong marks); see also, In re
Farah Manufacturing Co., Inc., 435 F.2d 594, 168 USPQ 277,
278 (CCPA 1971).
Finally, respondent noted in its brief that there is no
evidence of instances of actual confusion. To determine
whether the absence of actual confusion is relevant, we must
consider the length of time and conditions under which the
parties have concurrently used their marks without any
reported instances of confusion. Based on the record before
us, we find there has been extremely little overlap or
concurrent use of the parties’ marks in connection with
their services. Respondent’s restaurant and bar services
under the mark have been offered only in one location in Las
Vegas, while petitioner’s use of the BEACHCOMBERS mark in
connection with restaurant and banquet services has been
limited to one location in Hawaii. The services have been
rendered contemporaneously for only a relatively short
period of time. There is no evidence that the parties
advertised in the same publications or otherwise promoted
their services in the same geographic region. We therefore
cannot deduce from the lack of actual confusion factor that
confusion is not likely to occur.
Cancellation No. 92044469
28
Moreover, while evidence of actual confusion may be
some of the best evidence of likelihood of confusion, the
converse is not true, as evidence of actual confusion is
difficult to obtain. See Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed.
Cir. 1983) (absence of significant evidence of actual
confusion does not mean that there is no likelihood of
confusion); see also, Gillette Canada Inc. v. Ranir Corp.,
23 USPQ2d 1768, 1774 (TTAB 1992).
In conclusion, we have considered all relevant evidence
in this case bearing on the du Pont factors and conclude
that there is a likelihood of confusion between petitioner’s
BEACHCOMBERS mark and respondent’s DON THE BEACHCOMBER mark.
Notwithstanding any perceived weakness in respondent’s mark,
we conclude there is a likelihood of confusion because the
services are identical or closely related, the trade
channels and purchasers are presumptively the same, and the
marks are similar.
Decision: The petition to cancel is granted, and
Registration No. 2938695 will be cancelled in due course.