Best Western Int'l., Inc.v.Clubhouse Inns of America, Inc.

Trademark Trial and Appeal Board

Mar 30, 1999

No. 91099156 (T.T.A.B. Mar. 30, 1999)

Paper No. 18
RFC/KdeJ
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB MARCH 30,99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
Best Western International, Inc.
v.
Clubhouse Inns of America, Inc.
________
Opposition No. 99,156
to application Serial No. 74/574,780
filed on September 16, 1994
________
Joseph H. Roediger of Nelson & Roediger for Best Western
International, Inc.
Edward L. Brown, Jr. for Clubhouse Inns of America, Inc.
________
Before Cissel, Seeherman and Chapman, Administrative
Trademark Judges.
Cissel, Administrative Trademark Judge:
On September 16, 1994, Clubhouse Inns of America, Inc.,
hereinafter referred to as “applicant,” applied to register
the mark “BEST GUEST” for “hotel services,” in Class 42.1
The basis for the application was applicant’s claim of use
of the mark in commerce since February 1, 1991.

1Application Serial No. 74/574,780.
Opposition No. 99,156
2
On October 13, 1995, Best Western International, Inc.,
Opposition No. 99,156
3
hereinafter referred to as “opposer,” filed a timely notice
of opposition. As grounds for opposition, opposer asserted
that it has used the mark “BEST GUEST” “in advertising its
hotel and motel services” since at least as early as August
1, 1989; that it has used the mark “BEST GUEST” “as a mark
for making hotel and motel reservations in the United States
and Canada” since at least as early as August 1, 1989; that
it used the mark “BEST GUEST” prior to applicant’s alleged
first use of “BEST GUEST”; and that applicant’s “BEST GUEST”
mark, as used in connection with the services set forth in
the application, so resembles opposer’s “BEST GUEST” mark
that confusion, deception and mistake are likely.
In answer to the notice of opposition, applicant
admitted that opposer has used “BEST GUEST” “in advertising”
since at least as early as August 1, 1989, but denied that
opposer has used “BEST GUEST” as a service mark, and
otherwise denied the salient allegations of the notice of
opposition. Applicant has also asserted that there is no
likelihood of confusion because opposer used “BEST GUEST” as
a descriptive term and failed to establish secondary meaning
prior to applicant’s first use of the mark.
A trial was conducted in accordance with the Trademark
Rules of Practice, but only opposer submitted evidence and a
brief. Neither party requested an oral hearing before the
Board.
Opposition No. 99,156
4
The record includes the pleadings, the file of the
opposed application, and the testimony, by stipulated
declaration, with exhibits, of Dorian LeFre, opposer’s Legal
Administrator.2
The issues before the Board are priority of use of the
mark “BEST GUEST” and the likelihood of confusion between
opposer’s “BEST GUEST” mark and applicant’s “BEST GUEST”
mark.
The evidence and testimony of record in this proceeding
show that opposer has provided hotel and related services
since 1946, and claims to be one of the world’s largest
lodging chains. Opposer began using the alpha-numeric toll-
free telephone number 1-800-BEST-GUEST in 1989 in connection
with its GOLD CROWN CLUB program, which was begun in the
previous year to reward frequent guests of opposer’s hotels
and motels. From its inception in 1988, opposer’s GOLD
CROWN CLUB grew to 420,000 members in 1991. GOLD CROWN CLUB
members earn points based on the amount spent on lodging in
opposer’s hotels and motels, and when they reach certain
numbers of points, they can redeem them for awards, such as
free lodging, U.S. Savings Bonds, automobile club
memberships and gift certificates, by calling the telephone
number 1-800-BEST-GUEST. In addition to redeemable points,

2The parties have stipulated, pursuant to Trademark Rule 2.123(b), that
the testimony by declaration of Dorian LeFre should be considered to
meet the requirements for trial testimony.
Opposition No. 99,156
5
GOLD CROWN CLUB members enjoy “Best Guest”3 “treatment,”
“privileges” or “amenities” that vary with each hotel or
motel, but typically include free room upgrades, free coffee
in the room, free cocktails, and the like.
Opposer does not have a registration for the mark “BEST
GUEST,” and so must rely on its common law rights based on
use of the mark. Based on the evidence of record, we find
that opposer began using the term “BEST GUEST” as a service
mark in promotional materials for opposer’s GOLD CROWN CLUB,
including applications for club membership, “Go for the
Gold” catalogs describing the awards available to club
members, and annual GOLD CROWN CLUB directories and road
atlas and travel guides, before applicant filed the
application which is the subject of this opposition.
A number of opposer’s exhibits, particularly Exhibits
“A,” “C,” “F,” “G” and “J,” establish that opposer uses the
alpha-numeric toll-free telephone numbers 1-800-BEST-GUEST
and 1-800-BEST GUEST in connection with its hotel and motel
services. Some courts have held that marks which correspond
to telephone numbers may be protectable as trademarks. See
Dranoff-Perlstein Assoc. v. Sklar, 967 F.2d 852, 23 USPQ2d
1174 (3d Cir. 1992), and cases cited therein. In this case,

3Although opposer uses “BEST GUEST” in block capital letters in its
toll-free telephone number, when opposer uses the term as a service
mark, it appears as “Best Guest,” in quotation marks and with the first
letter of each word capitalized. For the sake of consistency, we
hereinafter refer to opposer’s mark as “BEST GUEST.”
Opposition No. 99,156
6
however, we do not have to consider the issue because the
manner in which opposer uses 1-800-BEST-GUEST and 1-800-BEST
GUEST is not as a mark identifying the source of opposer’s
services, but rather, merely as a telephone number.
Even though opposer cannot base its rights on use of
its toll-free telephone number, opposer used the term “BEST
GUEST” as a service mark well prior to September 16, 1994,
the earliest date upon which applicant may rely. Three of
opposer’s exhibits -- Exhibit “B,” a portion of an
application for membership in opposer’s GOLD CROWN CLUB with
an August 1, 1989 revision date; Exhibit “D,” a copy of two
pages of opposer’s 1990 Road Atlas and Travel Guide; and
Exhibit “E,” a copy of two pages of opposer’s 1991 Road
Atlas and Travel Guide -- show service mark use of the mark
“BEST GUEST” as follows:
You’ll receive “Best Guest” treatment every time you
stay. . . .
Likewise, Exhibit “H,” a copy of two pages of the Spring
1993 issue of opposer’s All Points Bulletin, shows the
following service mark use of the term “BEST GUEST”:
Our exciting new merchandise program is your reward
for being a Best Western “Best Guest.”
Service mark use of “BEST GUEST” is also shown in Exhibit
“I,” a copy of two pages of the Fall/Winter 1993 All Points
Bulletin:
Your Gold Crown Club Directory provides the amenities
you can expect at each Best Western facility. It’s
Opposition No. 99,156
7
all part of the Best Guest amenities you enjoy as a
Gold Crown Club International member!
Exhibit “K,” a copy of the cover page of opposer’s 1993 Gold
Crown Club International Directory, as revised in December
of 1992, also shows use of “BEST GUEST” as a service mark:
As a member of the Gold Crown Club, you will receive
“Best Guest” privileges at many individual properties
. . . .
In summary on this issue, based on a review of this
evidence,4 we find that opposer began using “BEST GUEST” as
a service mark for its hotel services for preferred
customers prior to the September 16, 1994 filing date of the
opposed application, which, in the absence of evidence
establishing applicant’s first use date, is the earliest
date upon which applicant is entitled to rely. See Levi
Strauss & Co. v. R. Josephs Sportswear Inc., 28 USPQ2d 1464
(TTAB 1993), recon. denied, 36 USPQ2d 1328 (TTAB 1994).
Thus, opposer has established priority over applicant.
In view of opposer’s priority of use, we then turn to
the issue of likelihood of confusion. Because opposer’s
mark is virtually identical to applicant’s mark, and
opposer’s services are closely related to applicant’s
identified services, “hotel services,” applicant’s use of
its mark for the identified services is likely to cause
confusion.

4The remaining evidence (Exhibits “L” through “T”) concerns opposer’s
use of the mark “BEST GUEST” after applicant’s September 16, 1994
application filing date.
Opposition No. 99,156
8
In reaching this conclusion, we have considered the
evidence of record in light of the relevant evidentiary
factors set out in In re E.I. duPont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563 (CCPA 1973). Not all of the duPont
factors are relevant or of similar weight in every case.
Opryland USA Inc. v. The Great American Music Show Inc., 23
USPQ2d 1471 (CAFC 1992). Two of the primary factors in the
instant case are the parties’ marks and the services with
which they are used.
As to the marks, we note again that opposer’s mark, as
used, is “Best Guest,” capitalizing the first letter of each
word and setting the mark apart with quotation marks.
Applicant’s mark is “BEST GUEST” in typed form. This form
would include protection for a mark displayed in identical
form to opposer’s mark. In appearance, pronunciation,
meaning and commercial impression, opposer’s mark is
virtually identical to applicant’s mark.
Before proceeding to a comparison of the services, we
note that where, as here, the marks are the same or nearly
so, it is only necessary that there be a viable relationship
between the goods or services in order to support a finding
of a likelihood of confusion. See In re Concordia
International Forwarding Co., 222 USPQ 355 (TTAB 1983). The
question of likelihood of confusion in this opposition
proceeding must be determined not on the basis of evidence
Opposition No. 99,156
9
adduced as to the nature and character of applicant’s
services as they are actually rendered, but rather, on the
basis of a comparison of the services set forth in the
application with the services with which opposer has shown
prior use of its unregistered mark. See Hecon Corp. v.
Magnetic Video Corp., 199 USPQ 502 (TTAB 1978).
In this case, the opposed application broadly
identifies applicant’s services as “hotel services.”
Exhibits “B,” “D,” “E,” “H,” “I” and “K” clearly show “BEST
GUEST” used by opposer as a service mark for services it
provides to its hotel guests. Exhibit “L,” a copy of four
pages from opposer’s 1994 Gold Crown Club International
Directory, establishes that these services, referred to as
“‘Best Guest’ Amenities,” include providing additional
benefits, such as free newspapers, free cocktails, free
coffee in the room, free local telephone calls, free
facsimile services, free room upgrades, free breakfasts and
later checkout times, to preferred guests of opposer’s
hotels. Applicant’s identified hotel services are highly
similar and otherwise closely related to the services
opposer has rendered under the mark “BEST GUEST” to frequent
guests of its hotels and motels. While lodging upgrades,
coffee, cocktails and so forth are not ordinarily offered
free of charge by hotels, they are certainly encompassed
within the broad range of services referred to as “hotel
Opposition No. 99,156
10
services.” That no separate charge is levied for these
activities does not alter the fact that opposer’s mark
identifies their source.
Inasmuch as opposer has established its priority and
the parties are using legally identical marks in connection
with similar services, confusion is likely.
DECISION: The opposition is sustained.
R. F. Cissel
E. J. Seeherman
B. A. Chapman
Administrative Trademark
Judges, Trademark Trial
and Appeal Board