Venture Out Properties LLCv.Wynn Resorts Holdings, LLC

Trademark Trial and Appeal Board

Jan 3, 2007

No. 91168647 (T.T.A.B. Jan. 3, 2007)

al/apb Mailed: January 3, 2007

Opposition No. 91167237
Opposition No. 91167238
Opposition No. 91167252
Opposition NO. 91168647

Venture Out Properties LLC

v.

Wynn Resorts Holdings, LLC
(as consolidated)

Before Quinn, Rogers and Cataldo,
Administrative Trademark Judges

By the Board:

Wynn Resorts Holdings LLC (“applicant”) seeks to
register the mark CABANA BAR & CASINO in standard character
form1 and in the following stylized form2 for “casino
services in International Class 41:

1 Applicant’s mark is the subject of application Serial No.
76597834, filed June 15, 2004, which is based on an assertion of
a bona fide intent to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. 1051(b).
2 Applicant’s mark is the subject of application Serial No.
78475098, filed August 27, 2004, which is based on an assertion
of a bona fide intent to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. 1051(b).
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS DISPOSITION
IS CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
2

In Opposition Nos. 91167252 and 91167237, Venture Out
Properties LLC (“opposer”) has opposed registration of these
marks on the grounds of likelihood of confusion and dilution
with its pleaded mark CABANA, used for “hotel services.”3
Applicant also seeks to register the mark CABANA BAR in
standard character form4 and the mark CABANA BAR & CASINO
in, again, the following stylized form5 for “restaurant, bar
and cocktail lounge services” in International Class 43:

3 Opposer’s pleaded mark is also the subject of application
Serial No. 76630391, filed February 7, 2006, asserting May 1999
as the date of first use and the date of first use in commerce.
On September 7, 2006, the USPTO issued a non-final action in
opposer’s application notifying opposer that registration may be
refused in view of, inter alia, the four pending involved
applications of applicant. On March 29, 2006, the USPTO issued a
notice of suspension wherein further action on opposer’s
application was suspended pending disposition of, inter alia,
applicant’s four involved applications.
4 Applicant’s mark is the subject of application Serial No.
76597835, filed June 15, 2004, which is based on an assertion of
a bona fide intent to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. 1051(b).
5 Applicant’s mark is the subject of application Serial No.
78475092, filed August 27, 2004, which is based on an assertion
of a bona fide intent to use the mark in commerce under Trademark
Act Section 1(b), 15 U.S.C. 1051(b).
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
3

In Opposition Nos. 91168647 and 91167238, opposer has
filed notices of opposition to registration of these marks
on the grounds of likelihood of confusion and dilution with
its same pleaded mark CABANA for “hotel services.”6
In each of the above-referenced proceedings, applicant
denied the salient allegations of the notice of opposition
in its answer.
We, sua sponte, hereby order the consolidation of the
above-referenced proceedings inasmuch as the parties are the
same and the proceedings involve common questions of law or
fact.7 In view thereof, Opposition Nos. 91167237, 91167238,
91167252, and 91168647 are hereby consolidated.
The Board file will be maintained in Opposition No.
91167237 as the "parent" case. As a general rule, from this
point on, should additional papers or motions be filed, only

6 See fn. 2, supra.
7 When cases involving common questions of law or fact are
pending before the Board, the Board may order the consolidation
of the cases. See Fed. R. Civ. P. 42(a); see also, Regatta Sport
Ltd. v. Telux-Pioneer Inc., 20 USPQ2d 1154 (TTAB 1991) and Estate
of Biro v. Bic Corp., 18 USPQ2d 1382 (TTAB 1991).

Opposition Nos. 91167237, 91167238, 91167252, and 91168647
4
a single copy should be filed; but that copy should bear all
four proceeding numbers in its caption.
We now consider opposer’s motions (filed July 17, 2006)
for summary judgment in each of the proceedings. The
motions have been fully briefed.
Opposer seeks summary judgment in its favor on the
grounds of priority of use and likelihood of confusion with
its pleaded mark. Specifically, opposer argues that
(through its predecessor-in-interest) it first used its
CABANA mark at least as early as May 1999; that such date
precedes both applicant’s asserted first use of its involved
marks on April 28, 2005, when applicant’s hotel property
first opened, and the filing dates of each subject
application; that the dominant portion of each of
applicant’s marks is identical to opposer’s mark; that “it
is beyond dispute” that casino services and restaurant, bar,
and cocktail lounge services are related to hotel services;
and no material issue of fact, therefore, is left for trial
inasmuch as a likelihood of confusion exists under Section
2(d) of the Trademark Act.
As evidentiary support for each of its motions, opposer
has submitted: (1) copies of advertisements from the
classified section of both the May 25, 1999 issue and the
August 12, 1999 issue of the Bay Area Reporter advertising
opposer’s hotel services under its CABANA mark; (2) copies
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
5
of applicant’s involved applications8; (3) a copy of
applicant’s Objections and Responses to Opposer’s First Set
of Interrogatories dated January 31, 2006; (4) a copy of the
September 7, 2005 Office Action issued by the USPTO in
opposer’s application Serial No. 76630391; (5) a copy of the
Notice of Suspension issued by the USPTO on March 28, 2006
in that application; (6) a copy of Applicant’s Response to
Opposer’s First Set of Requests for Admissions dated January
27, 2006; (7) copies of several third-party registrations
for marks used in connection with both hotel services and
casino services and/or hotel services and restaurant, bar,
and lounge services; (8) a copy of applicant’s application
Serial No. 78679036 for the mark WYNN used in connection
with “casino services” in International Class 41 and “resort
hotel, restaurant, bar and lounge services” in International
Class 43; (9) a declaration of G. Lee Fitzgerald, manager of
opposer, with related exhibits; and (10) a declaration of
Martin E. Hsia, counsel for opposer, with related exhibits
for opposer.
In response to the motion, applicant asserts that
although opposer’s hotel allegedly opened before the opening
of applicant’s establishment, the parties’ marks are used
for different services and such services do not overlap;

8 Applicant’s involved applications are automatically of record
pursuant to Trademark Rule 2.122(b)(1) and need not be introduced
again.
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
6
that applicant does not use its mark for hotel services;
that priority of use of its CABANA marks at issue can
clearly be established for casino, restaurant, bar, and
cocktail lounge services since none of these services is
offered by opposer under its pleaded mark as evidenced by
opposer’s advertisements for its hotel, and by the fact that
gambling is illegal in Hawaii where opposer’s hotel is
located; and that no likelihood of confusion exists.
Applicant further argues that its use of the elements BAR
and BAR & CASINO in its respective marks distinguishes its
CABANA marks from opposer’s mark inasmuch as differences in
sight, sound, connotation, and commercial impression are
apparent; that opposer’s submission of third-party
registrations for “a few famous Las Vegas hotels” exhibiting
marks used in connection with both hotel services and casino
services and/or hotel services and restaurant, bar, and
lounge services is irrelevant because the majority of hotels
across the country do not market casino, restaurant, bar,
and cocktail lounge services under the same mark as hotel
services; that the trade channels used by both parties are
significantly different because applicant only uses its
involved marks to advertise, market, and promote its casino,
restaurant, bar, and cocktail lounge services to guests
already staying at its resort hotel rather than the general
public, whereas opposer uses its mark to attract “guests to
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
7
a small, uniquely themed specialty hotel in Hawaii” which is
“gay owned and operated”; that concurrent use of the marks
at issue is unlikely to confuse consumers who are not likely
to make impulsive decisions when planning their vacations
and booking hotel accommodations; that CABANA is essentially
a weak mark as exhibited by applicant’s “cursory search of
the USPTO’s official website” which shows “over 100 live
registrations and applications for marks incorporating the
term CABANA for a variety of goods and services;” that
opposer has neither alleged nor provided evidence
demonstrating actual confusion amongst the relevant
consuming public; that consumer confusion is unlikely given
the fact that both parties limit use of their marks to their
respective discrete classes of services, rather than a
variety or large number of diverse products; and that any
potential confusion between the marks at issue is de minimis
because “the marks are marketed to different consumers, in
different markets, through different means, and for
different goods and services.”
As evidentiary support for its position applicant has
submitted: (1) a declaration of Kevin Tourek, Senior Vice
President and General Counsel of applicant; (2) a copy of
each of applicant’s involved applications; (3) photographs
exhibiting use of applicant’s involved marks at its resort;
(4) a website excerpt for opposer’s Cabana at Waikiki Hotel;
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
8
and (5) a declaration of Lauri Thompson, applicant’s
counsel.
In its reply brief, opposer asserts that applicant’s
applications are not limited in terms of channels of trade
or geography and that because the involved services are
described broadly, applicant’s marks must be assumed to be
used in connection with services available to all classes of
purchasers and to be marketed in all channels of trade,
including to prospective purchasers of opposer’s hotel
services. Opposer further argues that applicant’s reliance
on opposer’s printed advertisements, its allegations that
opposer only markets its services to the gay community, and
its contention that applicant only advertises its own
services to guests staying at its hotel, fail to raise any
genuine issues of material fact because such assertions are
irrelevant to the Board’s determination of likelihood of
confusion. Additionally, with regard to applicant’s
contention that the marks are different because of
descriptive or generic terms in applicant’s marks, opposer
argues that there appears to be no dispute regarding the
dominance of the term CABANA in applicant’s marks, and the
descriptive or generic elements of applicant’s marks do not
cure the confusion that is otherwise created by the common
dominant term.
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
9
Summary judgment is an appropriate method of disposing
of cases in which there are no genuine issues of material
fact in dispute, thus leaving the case to be resolved as a
matter of law. See Fed. R. Civ. P. 56(c). A party moving
for summary judgment has the burden of demonstrating the
absence of any genuine issue of material fact, and that it
is entitled to summary judgment as a matter of law. See
Celotex Corp. v. Catrett, 477 U.S. 317 (1986), and Sweats
Fashions Inc. v. Pannill Knitting Co. Inc., 4 USPQ2d 1793
(Fed. Cir. 1987). When the moving party's motion is
supported by evidence sufficient to indicate that there is
no genuine issue of material fact, and that the moving party
is entitled to judgment, the burden shifts to the nonmoving
party to demonstrate the existence of specific genuinely-
disputed facts that must be resolved at trial.
The nonmoving party may not rest on the mere
allegations of its pleadings and assertions of counsel, but
must designate specific portions of the record or produce
additional evidence showing the existence of a genuine issue
of material fact for trial. In general, to establish the
existence of disputed facts requiring trial, the nonmoving
party "must point to an evidentiary conflict created on the
record at least by a counterstatement of facts set forth in
detail in an affidavit by a knowledgeable affiant." Octocom
Systems Inc. v. Houston Computer Services Inc., 16 USPQ2d
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
10
1783, 1786 (Fed. Cir. 1990), citing Barmag Barmer
Maschinenfabrik AG v. Murata Machinery, Ltd., 221 USPQ 561,
564 (Fed. Cir. 1984). A dispute as to a material fact is
genuine only if a reasonable fact finder viewing the entire
record could resolve the dispute in favor of the nonmoving
party. See Olde Tyme Foods Inc. v. Roundy's Inc., 22 USPQ2d
1542, 1544 (Fed. Cir. 1992). If the nonmoving party fails
to make a sufficient showing on an essential element of its
case with respect to which it would have the burden of proof
at trial, judgment as a matter of law may be entered in
favor of the moving party. See Fed. R. Civ. P. 56(c),
Celotex Corp., 477 U.S. at 322-323. Finally, in deciding a
motion for summary judgment, the Board must view the
evidence in the light most favorable to the nonmovant, and
must draw all reasonable inferences from underlying facts in
favor of the nonmovant. Id.
Based on the record now before us and for the reasons
discussed below, we conclude that summary judgment is
appropriate in this case because opposer has established
that there are no genuine issues of material fact remaining
for trial with regard to its claims of priority of use and
likelihood of confusion, and that it is entitled to a
judgment on these issues pursuant to Section 2(d) of the
Trademark Act.
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
11
As a threshold matter, we find that the evidence of
opposer's use of the mark CABANA is sufficient to establish
opposer's standing in this case. No genuine issue of
material fact exists on this issue.
We turn next to the issue of priority and find that
opposer’s date of first use of its mark CABANA is May 1999
as shown by the advertisements for its hotel demonstrating
such use and the declaration of G. Lee Fitzgerald attesting
to such first use and continuing use. Applicant’s date of
first use of each of the four involved marks, as established
in its responses to opposer’s discovery requests, is April
28, 2005, the opening date of the Wynn Las Vegas Hotel.
Inasmuch as such date is obviously subsequent to the May
1999 date of first use proven by opposer, opposer has
established that it has priority of use herein.9 Further,
applicant does not dispute that opposer first used its mark
in May 1999.
We next consider the issue of likelihood of confusion
and, as with any case in which such issue arises, we analyze
whether there exists a likelihood of confusion under the
thirteen factors set forth in In re E.I. du Pont de Nemours
& Co., 177 USPQ 563, 567 (CCPA 1973). See also In re

9 Moreover, opposer’s proven date of first use is prior to the
earliest dates upon which applicant can rely for priority
purposes, i.e., its application filing dates. See Section 7(c)
of the Trademark Act.

Opposition Nos. 91167237, 91167238, 91167252, and 91168647
12
Majestic Distilling Co., 65 USPQ2d 1201, 1203 (Fed. Cir.
2003); and Recot Inc. v. M.C. Becton, 54 USPQ2d 1894, 1896
(Fed. Cir. 2000). However, while we have considered each
factor for which we have evidence, we focus our analysis
herein on the relevant du Pont factors in this proceeding,
namely, the appearance of the marks, the related nature of
the services, and the similarity of trade channels. Han
Beauty, Inc. v. Alberto-Culver Co., 57 USPQ2d 1557, 1559-
1560 (Fed. Cir. 2001).
To determine whether the marks are similar for purposes
of assessing the likelihood of confusion, we must consider
the appearance, sound, connotation and commercial impression
of each mark. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005). In a particular case, any one of these bases
for comparison may be critical in finding marks to be
similar. In addition, it is a well-established principle
that, in articulating reasons for reaching a conclusion on
the issue of likelihood of confusion, while the marks are
compared in their entireties, including descriptive or
disclaimed portions thereof, "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 the
ultimate conclusion rests on consideration of the marks in
their entireties. Indeed, this type of analysis appears to
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
13
be unavoidable." In re National Data Corp., 224 USPQ 749,
751 (Fed. Cir. 1985).
Opposer’s mark is CABANA and applicant’s involved marks
share and stress the term CABANA. This term is the first
element in each of applicant’s involved marks. See Presto
Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ 1895 (TTAB
1988). In applicant’s stylized mark, CABANA is stressed by
virtue of its larger size and bolder presentation. In re
Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB
1987). The additional elements which make up applicant’s
marks, namely CASINO and BAR & CASINO, are disclaimed terms.
Although we do not disregard these terms, disclaimed matter
is often "less significant in creating the mark's commercial
impression." In re Code Consultants, Inc., 60 USPQ2d 1699,
1702 (TTAB 2001). In this instance, the terms CASINO and
BAR & CASINO are generic for applicant’s casino and cocktail
lounge services, respectively, and accordingly have little
commercial significance. See In re Chatam International
Inc., 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) ("Because ALE
has nominal commercial significance, the Board properly
accorded the term less weight in assessing the similarity of
the marks under Du Pont. As a generic term, ALE simply
delineates a class of goods"). See also In re Dixie
Restaurants, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (Federal
Circuit held that, despite the addition of the words "The"
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
14
and "Cafe" and a diamond-shaped design to registrant's DELTA
mark, there was a likelihood of confusion).
We conclude that the term CABANA is clearly the
dominant term in each of the involved marks. In addition,
the marks are similar in sound and appearance to the extent
that they begin with the identical dominant term CABANA.
While the elements CASINO and BAR & CASINO appear in
applicant’s marks and do not appear in opposer’s, the
addition of these generic terms for the respective services
offered under each mark does not serve to significantly
distinguish the marks overall, particularly if the services
themselves are related. Furthermore, the meaning and
commercial impression of the marks are, likewise, similar.
Here, the use of the term CABANA suggests, for both
opposer’s and applicant’s involved services, that the
services are offered at a beach or swimming pool and evoke
the feelings of relaxation and enjoyment generally
associated with such locations.10
Next, we consider whether the services of opposer and
applicant are related. Applicant's services are casino,

10 We take judicial notice of the relevant definition of "cabana"
as meaning “a shelter on a beach or at a swimming pool used as a
bathhouse.” The American Heritage Dictionary of the English
Language (3rd ed. 1992). 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,
217 USPQ 505 (Fed. Cir. 1983).

Opposition Nos. 91167237, 91167238, 91167252, and 91168647
15
restaurant, bar, and cocktail lounge services. Opposer's
services are hotel services.
In order to find that there is a likelihood
of confusion, it is not necessary that the
goods or services on or in connection with
which the marks are used be identical or
even competitive. It is enough if there is a
relationship between them such that persons
encountering them under their respective
marks are likely to assume that they
originate at the same source or that there
is some association between their sources.

McDonald’s Corp. v. McKinley, 13 USPQ2d 1895, 1898 (TTAB
1989). See also In re Opus One, Inc., 60 USPQ2d 1812, 1814-
15 (TTAB 2001).
There is no genuine issue that the services are closely
related. The evidence of record establishes that there is a
relationship between opposer’s hotel services and
applicant's services as set forth in each involved
application, such that a reasonable consumer, when viewing
the marks, would be confused as to the source or sponsorship
of the services. These services may be offered under the
same mark as illustrated by the third-party registrations
which issued based on use of such marks in commerce:
U.S. Registration No. 907693 for the mark
CAESARS PALACE for “hotels and restaurant
services” in International Class 42.

Opposition Nos. 91167237, 91167238, 91167252, and 91168647
16
U.S. Registration No. 1851743 for the mark 4
QUEENS for “casino services” in
International Class 41 and for “hotel
services” in International Class 42.

U.S. Registration No. 2015176 for the mark
FLAMINGO PLAYERS CLUB for “casino services”
in International Class 41 and for “hotel
services” in International Class 42.
U.S. Registration No. 2121189 for the mark
TAJ MAHAL for “casino services” in
International Class 41 and for “hotel
services” in International Class 42.
U.S. Registration No. 2771155 for a design
mark for, inter alia, “casino services;
entertainment services in the nature of live
performances by singers, comedians, dancers,
and musical groups” in International Class
41 and for “resort hotel, restaurant, bar
and lounge services” in International Class
43.
U.S. Registration No. 2789028 for the mark
HARD ROCK CASINO for “conducting
entertainment, exhibitions in the nature of
live music, music festivals and casino
services” in International Class 41 and for
“restaurant, bar and take-out food services
and hotel services” in International Class
42.
U.S. Registration No. 2843123 for the mark
HARRAHS and design for “casino entertainment
services” in International Class 41 and for
“hotel and restaurant services” in
International Class 43.
U.S. Registration No. 3021734 for the mark
CAESARS ENTERTAINMENT for, inter alia,
“casino services” in International Class 41
and “resort hotel, bar, and restaurant
services; providing convention services” in
International Class 43.
U.S. Registration No. 3034766 for GLORY OF
ROME for, inter alia, “casinos” in
International Class 41 and for “resort,
hotel, bar, restaurant and cocktail lounge
services; providing convention facilities;
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
17
providing banquet facilities for special
occasions” in International Class 43.
Additionally, we note applicant’s unrelated application
Serial No. 78679036 for the mark WYNN11 for, inter alia,
“casino services” in International Class 41 and for “resort
hotel, restaurant, bar and lounge services” in International
Class 43.
Thus, the numerous third-party registrations and
applicant’s unrelated application for the mark WYNN suggest
that the services involved herein, namely, opposer’s hotel
services and applicant’s casino services, restaurant, bar,
and cocktail lounge services, are of a type that may emanate
from a single source in connection with the same mark. See
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993); In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988).
Applicant argues that opposer's evidence is irrelevant
and insufficient to show the absence of a genuine issue as
to whether the parties' respective services are related.
However, in stark contrast to opposer's submission of
evidence, applicant did not provide any evidence to show, or
designate specific portions of the record to show, that
there is a genuine factual issue as to whether the
respective services are related. In view of the extensive

11 Filed July 26, 2005, asserting April 28, 2005 as a date of
first use and first use in commerce.
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
18
evidence provided by opposer, applicant's unsupported
argument is unpersuasive. See Octocom, 16 USPQ2d at 1786
(Court determined that applicant's argument was "without
evidentiary foundation" and "no more than [applicant's]
disagreement with the board's ultimate conclusion on the
likelihood-of-confusion issue"). It is clear that opposer's
“hotel services” are highly similar to the services
identified in all four of applicant’s subject applications,
in that hotel guests often dine in restaurants and drink in
bars and lounges during their travels, as well as engage in
recreational activities, such as gambling in casinos.
Moreover, we note that 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) and 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., 41 USPQ2d at 1534 (likelihood of confusion
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
19
between THE DELTA CAFÉ and design for restaurant services
and DELTA for hotel, motel and restaurant services).
Accordingly, we find that the parties' services are
related.
We next consider whether the channels of trade of the
respective services are different. Applicant, as earlier
noted, argues that there is a genuine issue of material fact
as to whether the channels of trade of the respective
services are different because its casino, restaurant, bar,
and cocktail lounge services are marketed only to guests
already staying at its resort hotel, whereas opposer’s hotel
services are marketed to guests interested in staying at a
small, “gay owned and operated” resort in Hawaii. Even if
these contentions are accepted as true, applicant's argument
is not well taken. It is well settled that the
determination of whether there is a likelihood of confusion
must be based on the goods and services as they are
identified in applicant’s opposed applications. Octocom, 16
USPQ2d at 1787. See also J & J Snack Foods Corp. v.
McDonald's Corp., 18 USPQ2d 1889, 1882 (Fed. Cir. 1991); and
Canadian Imperial Bank of Commerce, N.A. v. Wells Fargo
Bank, 1 USPQ2d 1813 (Fed. Cir. 1987). Where there is no
limitation on the channels of trade in the recitation of
services in any of the subject applications, as in this
proceeding, it is presumed that the recitations encompass
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
20
all services of the type described, that they move in all
normal channels of trade, and that they are available to all
potential customers. Paula Payne Products Co. v. Johnson
Publishing Co., 177 USPQ 76 (CCPA 1973); Kalart Co. v.
Camera-Mart, Inc., 119 USPQ 139 (CCPA 1958); In re Elbaum,
211 USPQ 639, 640 (TTAB 1981). For these reasons,
applicant’s contention in its brief in opposition to the
motion for summary judgment that the channels of trade for
its goods will be limited is insufficient to raise a genuine
issue of material fact. Fed. R. Civ. P. 56(e). See
Octocom, 16 USPQ2d at 1786 (“the question of registrability
of an applicant's mark must be decided on the basis of the
identification of goods set forth in the application
regardless of what the record may reveal as to the
particular nature of an applicant's goods, the particular
channels of trade or the class of purchasers to which sales
of the goods are directed”). Given the unrestricted
recitation of services in the opposed applications and lack
of evidence from applicant to contradict the evidence
provided by opposer, there is no basis for the Board to find
that a genuine issue of material fact exists as to channels
of trade. Because the services are clearly related, they
would be offered in the same channels of trade and offered
to the same classes of consumers, namely, the general
public.
Opposition Nos. 91167237, 91167238, 91167252, and 91168647
21
Upon careful consideration of the pleadings, the
parties' arguments, the evidence submitted by opposer, and
the absence of any contravening evidence from applicant, and
drawing all justifiable inferences in favor of applicant as
the nonmoving party, we find that no genuine issue of
material fact remains for trial with regard to opposer’s
standing and the claims of priority of use and likelihood of
confusion, that opposer has established that there is a
likelihood of confusion between its mark and applicant's
marks, and that opposer is entitled to judgment as a matter
of law as to these claims.
Accordingly, opposer's motion for summary judgment in
all four proceedings is GRANTED. The oppositions are
sustained on opposer’s claim under Section 2(d) of the
Trademark Act.
In view of our decision finding a likelihood of
confusion, we need not reach the issue of dilution. See
American Paging Inc. v. American Mobilphone Inc., 13 USPQ2d
2036, 2039-40 (TTAB 1989), aff’d without opinion, 17 USPQ2d
1726 (Fed. Cir. 1990).