Remington Hotel Corp.

Trademark Trial and Appeal Board

May 22, 2001

No. 75304383 (T.T.A.B. May. 22, 2001)

5/22/01
Paper No. 13
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Remington Hotel Corporation
________
Serial Nos. 75/304,383 and 75/305,882
_______
Scott J. Garber of Howrey Simon Arnold & White for
applicant.
Robin S. Chosid, Trademark Examining Attorney, Law Office
102 (Thomas Shaw, Managing Attorney).
_______
Before Quinn, Bucher and Bottorff, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
Applications were filed by Remington Hotel Corporation
to register the marks REMINGTON HOTEL CORPORATION (“HOTEL
CORPORATION” disclaimed) and REMINGTON SUITES HOTEL
CORPORATION (“SUITES HOTEL CORPORATION” disclaimed) for, as
amended, “hotel management and consultation for others” (in
International Class 35) and “food preparation and bar
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/305,882
2
services; and catering services” (in International Class
42).1
The Trademark Examining Attorney refused registration
under Section 2(d) on the ground that applicant’s marks,
when applied to applicant’s services, so resemble two marks
previously registered by the same entity. The cited marks
are as follows:
and REMINGTON’S ROADHOUSE, both for “restaurant services.”2
When the refusals were made final, applicant appealed.
Applicant and the Examining Attorney filed briefs. An oral
hearing was not requested. Because of the essentially
identical issues involved in these appeals, the Board shall
decide them in one opinion.
1 Respectively, application Serial No. 75/304,383, filed June 9,
1997, alleging first use on November 19, 1992 and first use in
interstate commerce on March 22, 1993, and application Serial No.
75/305,882, filed June 9, 1997, based on an allegation of a bona
fide intention to use the mark in commerce.
2 Respectively, Registration No. 2,133,669, issued February 3,
1998 pursuant to Section 2(f) (“ROADHOUSE EST. 1992” disclaimed),
and Registration No. 2,183,625, issued August 25, 1998 pursuant
to Section 2(f) (“ROADHOUSE” disclaimed).
Ser No. 75/305,882
3
The Examining Attorney maintains that the involved
marks are dominated by the identical term “REMINGTON” and
that the marks are similar in overall commercial
impression. The Examining Attorney also asserts that the
services are related, citing to a prior Board decision
involving hotel and restaurant services. Lastly, the
Examining Attorney is not persuaded by the absence of
actual confusion between the marks. The Examining Attorney
submitted a dictionary definition of the term “roadhouse.”
Applicant contends that the marks differ in sound,
appearance and overall commercial impression. Applicant
also points to what it perceives are differences in trade
channels and classes of purchasers for its services and
those of registrant. Applicant further relies on the
absence of any instances of actual confusion. In
connection with its arguments, applicant submitted the
declarations of its chairman and its general counsel.
We affirm the refusals to register.
Our 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. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
Ser No. 75/305,882
4
similarities between the marks and the similarities between
the services. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
With respect to the involved marks, applicant’s marks
clearly are dominated by the term “REMINGTON,” and
registrant’s marks are dominated by the term “REMINGTON’S.”
Thus, the dominant portions of the marks are essentially
identical, differing only in the possessive letter “s” in
registrant’s mark. Being the first words in each of the
marks, the terms “REMINGTON” and “REMINGTON’S” are the
portions that are most likely to be remembered by consumers
and to be used in calling for the services. Further,
although we have considered the marks in their entireties,
“there is nothing improper in stating that, for rational
reasons, more or less weight has been given to a particular
feature of a 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). For example, “that a particular feature
is descriptive or generic with respect to the involved
goods or services is one commonly accepted rationale for
giving less weight to a portion of a mark...” Id. at 751.
Insofar as applicant’s marks are concerned, the
disclaimed words “HOTEL CORPORATION” and “SUITES HOTEL
Ser No. 75/305,882
5
CORPORATION” clearly are generic and subordinate to the
term “REMINGTON.” The registrant’s marks likewise are
dominated by the term “REMINGTON’S.” The highly
descriptive/generic terms “ROADHOUSE” in one registration
and “ROADHOUSE EST. 1992” in the other have been
disclaimed.3 Although we have considered the disclaimed
portions in comparing the marks, these highly
descriptive/generic portions do not distinguish the marks
in any meaningful way. Further, the stylization shown in
one of the cited marks does not sufficiently distinguish
the mark from applicant’s marks.
In sum, the general overall commercial impression
engendered by the marks is similar. It is the general
overall commercial impression engendered by the marks that
must determine, due to the fallibility of memory and the
consequent lack of perfect recall, whether confusion as to
source or sponsorship is likely. The proper emphasis is
thus on the recollection of the average purchaser, who
normally retains a general rather than a specific
impression of trademarks or service marks. In re United
States Distributors, Inc., 229 USPQ 237, 239 (TTAB 1986).
3 The term “roadhouse” is defined as “an inn, a restaurant, or a
nightclub located on a road outside a town or city.” The
American Heritage Dictionary of the English Language (3d ed.
1992).
Ser No. 75/305,882
6
Further, the record is devoid of evidence of any third-
party uses or registrations of the same or similar marks
for similar types of services to those involved here.
With respect to the similarity between applicant’s
“hotel management and consultation for others” and “food
preparation and bar services and catering services” and
registrant’s “restaurant services,” it should be noted, at
the outset, that it is not necessary that the services be
identical or even competitive in nature in order to support
a finding of likelihood of confusion. It is sufficient
that the circumstances surrounding their marketing are such
that they would be likely to be encountered by the same
persons under circumstances that would give rise, because
of the marks used in connection therewith, to the mistaken
belief that the services originate from or are in some way
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Applicant’s food preparation and bar services and
catering services clearly are substantially related (if not
virtually identical) to registrant’s restaurant services.
All involve food and beverage preparation, and applicant
has not offered any cogent arguments to distinguish these
respective services. Applicant’s assertion that its
restaurant services are offered exclusively with its
Ser No. 75/305,882
7
hotels, while registrant’s are stand-alone restaurants, is
a fact not reflected in the recitations of services. Even
if this were the case, confusion still would be likely to
occur between the marks.
The bulk of applicant’s arguments relate to its
services of hotel management and consultation for others.4
In the past, the Board has found hotel and restaurant
services to be related such that purchasers would ascribe a
common origin to them when rendered under similar marks.
The Board has found that it is common for hotels to have
restaurants as part of their package of services and that
hotel chains have evolved from what were initially
restaurant businesses only. See: In re The Summit Hotel
Corporation, 220 USPQ 927 (TTAB 1983)[restaurants and
hotels offer complementary services to the same general
class of consumers]; Bonaventure Associates v. Westin Hotel
Co., 218 USPQ 537 (TTAB 1983)[restaurant services are an
integral part of hotel services]. See also: In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997)[likelihood of confusion between THE DELTA Café and
4 Applicant’s recitation of services reads, in relevant part,
“hotel management and consultation for others.” While we view
these services as somewhat different from “hotel services” per
se, applicant’s arguments and declarations are couched in terms
of traditional hotel services rendered to travelers (as opposed
to owners of hotels). In either case, confusion is likely to
occur between the marks.
Ser No. 75/305,882
8
design for restaurant services and DELTA for hotel, motel
and restaurant services].
Applicant attempts to distinguish its hotel-related
services from those of registrant’s services and, in this
connection, submitted the declaration of Archie Bennett,
Jr., applicant’s chairman. Mr. Bennett states that
applicant’s marks are “used in direct connection with its
hotel services” and that “[a]pplicant’s restaurant services
are also offered exclusively in connection with, and
physically in, its hotels.” Mr. Bennett also states that
these “hotel and restaurant services are offered
exclusively in connection with one another, and are not
mutually independent.” Mr. Bennett goes on to offer his
views on applicant’s services:
Applicant’s hotel and restaurant
services are geared toward business and
vacation travelers, as a specific
market. Many of Applicant’s consumers
have had a long relationship with
Applicant’s hotel chain, and are
willing to pay more for the high
quality of its services. Applicant
promotes these services so as to
establish relationships with its guests
in order to keep them returning on
future trips.
Generally, and on my information and
belief, Applicant’s customers make
their decision to stay at our hotels,
and to take advantage of our services,
prior to the time of their trip, many
of whom make advance reservations. In
Ser No. 75/305,882
9
my experience, our customers’ decision
to take advantage of our services is
generally not an “impulse” decision.
We have considered Mr. Bennett’s statements but have
found them unpersuasive in our likelihood of confusion
analysis. Business and vacation travelers also avail
themselves of restaurant services. Further, although many
business and vacation trips involve advance planning, such
trips also may involve a good deal of spontaneous
decisions, including at times where to stay and eat while
traveling.
The declaration of David Allison Brooks, applicant’s
general counsel, likewise does not compel a different
result in this case. Mr. Brooks attests to applicant’s use
of the mark REMINGTON HOTEL CORPORATION dating back to
March 1993, and that there have been no instances of actual
confusion during the time of contemporaneous use of
applicant’s and registrant’s marks. As a du Pont factor,
the absence of actual confusion weighs, of course, in
applicant’s favor. The probative weight is limited here,
however, by the fact that there are no specifics regarding
the extent of use by applicant or registrant. Thus, there
is no way to assess whether there has been a meaningful
opportunity for confusion to occur in the marketplace. In
any event, the test under Section 2(d) of the Trademark Act
Ser No. 75/305,882
10
is the likelihood of confusion. Weiss Associates Inc. v.
HRL Associates Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842-43
(Fed. Cir. 1990), aff'g, 12 USPQ2d 1819 (TTAB 1989); and
Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774
(TTAB 1992).
Lastly, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
We conclude that purchasers familiar with registrant’s
restaurant services rendered under the marks REMINGTON’S
ROADHOUSE and REMINGTON’S ROADHOUSE EST. 1992 (stylized)
would be likely to believe, upon encountering applicant’s
marks REMINGTON HOTEL CORPORATION and REMINGTON SUITES
HOTEL CORPORATION for hotel management and consultation for
others, food preparation and bar services and catering
services, that the services originated with or were somehow
associated with or sponsored by the same entity.
Decision: The refusals to register are affirmed.
Ser No. 75/305,882
11