Hartz Hotel Services, Inc.

Trademark Trial and Appeal Board

Mar 19, 2012

No. 76692673 (T.T.A.B. Mar. 19, 2012)

THIS OPINION IS A
PRECEDENT OF THE TTAB

Hearing: Mailed:
August 11, 2011 March 19, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Hartz Hotel Services, Inc.
________

Serial No. 76692673
_______

Robert G. Shepherd of Porzio Bromberg & Newman, P.C. for
Hartz Hotel Services, Inc.

Martha L. Fromm, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney).
_______

Before Seeherman, Bergsman and Shaw,
Administrative Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Hartz Hotel Services, Inc. (“applicant”) filed an
intent-to-use application to register the mark GRAND HOTELS
NYC, in standard character form, for “hotel services,” in
Class 43. Applicant disclaimed the exclusive right to use
the term “Hotels NYC.” Also, applicant claimed ownership
of the following registrations:
1. Registration No. 2613367 for the mark GRAND
HOSPITALITY for “hotel services.” Applicant disclaimed the
exclusive right to use the word “hospitality”;
Serial No. 76692673
2. Registration No. 2943561 for the mark GRAND BAR &
LOUNGE for “restaurant and bar services.”1 Applicant
disclaimed the exclusive right to use the term “Bar &
Lounge”; and
3. Registration No. 3481069 for the mark
ChelseaGrandHotel.com for “reservation services, namely,
making reservations for lodging.”
The Trademark Examining Attorney refused, under
Section 2(d) of the Trademark Act of 1946, 15 U.S.C.
§ 1052(d), to register applicant’s mark on the ground that
applicant’s mark is likely to cause confusion with the
registered mark GRAND HOTEL, in typed drawing form, for
“hotel and restaurant services,” in Class 42.2 Registrant
disclaimed the exclusive right to use the word “Hotel.”
The Examining Attorney also refused registration pursuant
to Section 2(d) in view of Registration No. 13253243 for the
mark GRAND HOTEL, with HOTEL disclaimed, registered for a
variety of goods and services (e.g., soap and shampoos,
note pads, tote bags, towels, luggage service, and golfing

1 Applicant made a typographical error in its ownership claim.
Applicant claimed ownership of 2943531, which is for the mark
CLEVELAND COTTON PRODUCTS for “wiping cloths” owned by The
Tranzonic Companies, instead of Registration No. 2943561. The
Board has corrected this error and has had the correct
registration entered into the Office database.
2 Registration No. 1250067, issued August 30, 1983; renewed.
3 Issued March 19, 1985; renewed.
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Serial No. 76692673
and recreational swim services). Both registrations are
owned by the same party.
The appeal has been fully briefed, and applicant and
the examining attorney appeared at an oral hearing.
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the issue of likelihood of confusion.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973). See also, In re Majestic
Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201,
1203 (Fed. Cir. 2003).
We concentrate our analysis on the likelihood of
confusion with Registration No. 1250067 since that
registration is for the same services as those identified
in applicant’s application. If we find that confusion is
likely between applicant’s mark and the mark in this
registration, and that the refusal on this basis should be
affirmed, there is no need for us to consider the issue of
likelihood of confusion with Registration No. 1325324. If
we do not find likelihood of confusion with respect to the
mark in this registration for identical services, then
there would be no likelihood of confusion with respect to a
registration for goods and services that are not identical.
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Serial No. 76692673
See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245
(TTAB 2010).
A. The similarity or dissimilarity and nature of the
services described in the application and
registration, channels of trade and classes of
consumers.

As indicated above, applicant is seeking to register
GRAND HOTELS NYC for “hotel services” and the recitation of
services in the cited registration is “hotel and restaurant
services.” Thus, the recitations of services are in part
identical. Because the services are in part identical, we
must presume that the channels of trade and classes of
purchasers are the same. See In re Thor Tech Inc., 90
USPQ2d 1634, 1639 (TTAB 2009); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are
legally identical, they must be presumed to travel in the
same channels of trade, and be sold to the same class of
purchasers.”). See also In re Viterra Inc., ___ F.3d ___,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there
was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on the this legal
presumption in determining likelihood of confusion).
B. The strength of the registered mark, the number and
nature of similar marks in use in connection with
similar services, and the similarity or dissimilarity
of the marks in their entireties as to appearance,
sound, connotation and commercial impression.

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Serial No. 76692673
The word “Grand” is defined as follows:
1. impressive in size, appearance or
general effect: grand mountain
scenery. 2. stately, majestic, or
dignified: In front of an audience her
manner is grand and regal. … 4.
magnificent or splendid: a grand
palace. … 11. first-rate; very good;
splendid: to have a grand time; to
feel grand.4 (Emphasis in the
original).

Thus, when “grand” is used in connection with “hotel,” the
resulting mark GRAND HOTEL indicates an impressive,
stately, magnificent or first-rate hotel.
Because GRAND HOTEL has been registered, it is
entitled to a presumption of validity by Section 7(b) of
the Trademark Act of 1946, 15 U.S.C. § 1057(b) (i.e., a
certificate of registration is prima facie evidence of the
validity of the registered mark and of the registration of
the mark, of the ownership of the mark, and of the owner’s
exclusive right to use the registered mark in commerce on
or in connection with the goods or services specified in
the registration). Thus, the registered mark GRAND HOTEL
cannot be treated as merely descriptive; we must consider
the mark to be at worst highly suggestive because it is a

4 The American Heritage Dictionary of the English Language
(Unabridged), p. 829 (2nd ed. 1987). The Board may take judicial
notice of dictionary evidence. University of Notre Dame du Lac
v. J. C. Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982),
aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).

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Serial No. 76692673
laudatory term as shown by the third-party registrations,
evidence of third-party use discussed infra, and the
dictionary definitions set forth above.
Applicant submitted copies of the five registrations
listed below for marks, each owned by a different entity,
that incorporate the term “Grand Hotel,” or in one case,
“Grande Hotel,” for “hotel services.”5
Registration No. Mark

2930876 THE GRAND HOTEL AT MOUNTAINEER
Registrant disclaimed the exclusive right
to use “Hotel”

2596891 THE SOUTH’S GRAND HOTEL
Registrant disclaimed the exclusive right
to use “The South’s” and “Hotel”

2585077 ANCHORAGE GRAND HOTEL and design
Registrant disclaimed the exclusive right
to use “Anchorage Grand Hotel”

3023113 LOUISVILLE’S GRAND HOTEL
The registration issued under Section
2(f) (acquired distinctiveness with
respect to “LOUISVILLE’S GRAND);
registrant disclaimed the exclusive right
to use “Hotel”

5 We do not consider the four (4) cancelled registrations
submitted by applicant. A cancelled registration is not entitled
to any of the presumptions of Section 7(b) of the Trademark Act.
See, e.g., In re Hunter Publishing Co., 204 USPQ 957, 963 (TTAB
1979) (cancellation “destroys the Section [7(b)] presumptions and
makes the question of registrability ‘a new ball game’ which must
be predicated on current thought.”).

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Serial No. 76692673

Registration No. Mark

3239284 FORT LAUDERDALE GRANDE HOTEL & YACHT CLUB
and design
Registrant disclaimed the exclusive right
to use “Fort Lauderdale” and “Hotel and
Yacht Club”

In addition, applicant submitted copies of
Registration No. 2191860 for the mark SOHO GRAND HOTEL and
Registration No. 2705826 for the mark TRIBECA GRAND HOTEL,
both for hotel services, registered under the provisions of
Section 2(f) and with a disclaimer of the exclusive right
to use the word “Hotel.” These registrations are owned by
two different companies that are related to applicant.
In its June 26, 2009 response, applicant submitted the
declaration of Robert Goldkind, a private investigator, who
confirmed the use of the following “Grand/Grande Hotel”
marks through personal contact:
1. The Grande Hotel at Mountaineer in Chester, West
Virginia;

2. Kyoto Grand Hotel and Gardens in Los Angeles,
California;

3. Geiser Grand Hotel in Baker City, Oregon;

4. Wilshire Grand Hotel in Los Angeles, California;

5. The South’s Grand Hotel in Memphis, Tennessee;6

6 The official name of this establishment is The Peabody Memphis
but The South’s Grand Hotel is an unofficial name. The operator
answered the telephone by saying “The Peabody Memphis: The
South’s Grand Hotel.”
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Serial No. 76692673
6. Anchorage Grand Hotel in Anchorage, Alaska; and

7. Bellissimo Grande Hotel in North Stonington,
Connecticut.

Finally, in its February 1, 2010 response, applicant
submitted copies of websites advertising the services of
the companies listed below which are offered under marks
incorporating the term “Grand Hotel”:
1. MGM Grand Hotel & Casino
2. The Grand Hotel Minneapolis
3. The Grand Hotel Ocean City
4. The Grand Hotel at Bridgeport also referencing
the Phoenix Grand Hotel and the Grand Hotel Salem

5. The Grand Hotel (Silicon Valley)
6. The Grand Hotel Cape May
7. North Conway Grand Hotel
8. Pensacola Grand Hotel
9. The Grand Hotel Waterloo
10. Jerome Grand Hotel
The websites for Nos. 1-3, 6, 8 and 9 provide information
identifying owners other than the registrant of the cited
registration. The websites for Nos. 4, 5, 7 and 10 did not
identify the owners.
In Plus Products v. Natural Organics, Inc., 204 USPQ
773 (TTAB 1979), which involved an opposition to the
registration of NATURE’S PLUS for vitamins by the owner of
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Serial No. 76692673
the mark PLUS, also for vitamins, the applicant made of
record eight third-party registrations that issued prior to
opposer’s registration and seven registrations that issued
after, all for marks containing the word PLUS and all for
goods that are the same or closely related to vitamins.
The Board drew the following inferences from the co-
existence of these registrations:
1. Opposer was satisfied to register PLUS side-by-
side with eight existing registrations.
2. The Patent and Trademark Office has historically
registered PLUS marks for vitamins to different
parties so long as there has been some
difference, not necessarily created by a
distinctive word, between the marks as a whole,
e.g., VITAMINS PLUS and IRON PLUS.
3. A number of different trademark owners have
believed, over a long interval of time, that
various PLUS marks can be used and registered
side by side without causing confusion provided
there are minimal differences between the marks.
Id. at 779; see also Jerrold Electronics Corp. v. The
Magnavox Company, 199 USPQ 751, 758 (TTAB 1978) (third-
party registrations “reflect a belief, at least by the
registrants, who would be most concerned about avoiding
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Serial No. 76692673
confusion and mistake, that various ’STAR’ marks can
coexist provided that there is a difference.”); In re Sien
Equipment Co., 189 USPQ 586, 588 (TTAB 1975) (the
suggestive meaning of the word “Brute” explains the
numerous third-party registrations incorporating that word
with other wording or material no matter how little
additional significance they may add to the word “Brute”
per se).
Because of the highly suggestive nature of the term
“Grand Hotel,” the third-party registrations, and the
evidence of third-party use of marks incorporating the term
“Grand Hotel,” we think that the same inferences apply in
the present case. It is clear from the third-party
registrations that the addition of a geographic location to
the word GRAND HOTEL has been sufficient for the Patent and
Trademark Office to view these marks as being sufficiently
different from the cited registrant’s mark, and from each
other, such as not to cause confusion. We presume that the
owner of the cited registration did not have a problem with
the registration of these third-party marks, as they all
issued after the registration of the cited registrant’s
registration without challenge by the registrant.
Moreover, the numerous third-party uses of GRAND HOTEL
marks for hotel services tend to confirm these inferences,
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Serial No. 76692673
and to show that consumers distinguish between these marks
even though the only distinguishing element is a
geographically descriptive term. Therefore, unlike a
situation involving an arbitrary or fanciful mark, the
addition of other matter to a laudatory or suggestive word
may be enough to distinguish it from another mark. In re
Hunke & Jocheim, 185 USPQ 188, 189 (TTAB 1975).
It seems both logical and obvious to us
that where a party chooses a trademark
which is inherently weak, he will not
enjoy the wide latitude of protection
afforded the owners of strong
trademarks. Where a party uses a weak
mark, his competitors may come closer
to his mark than would be the case with
a strong mark without violating his
rights. The essence of all we have
said is that in the former case there
is not the possibility of confusion
that exists in the latter case.

Sure-Fit Products Company v. Saltzson Drapery Company, 254
F.2d 158, 117 USPQ 295, 297 (CCPA 1958). Under these
circumstances, marks comprising the term “Grand Hotel” in
connection with hotel services should be accorded a narrow
scope of protection.
Keeping this in mind, we find in this case that the
marks are sufficiently different to avoid the likelihood of
confusion. We recognize that applicant’s mark GRAND HOTELS
NYC differs from the cited mark GRAND HOTEL by only the
inclusion of the geographic term NYC and the pluralization
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Serial No. 76692673
of HOTEL, and that such differences have been found in
other cases insufficient to distinguish two marks for
identical services. See Wilson v. Delaunay, 245 F.2d 877,
114 USPQ 339 (CCPA 1957) (ZOMBIE for candy is likely to
cause confusion with ZOMBIES for a candy-like confection in
the nature of a macaroon).
However, given the fact that third-party registrations
for hotel services have issued for marks which differ from
the registrant’s by only the inclusion of a geographic
indicator, and without objection by the registrant, it
would appear that the registrant itself considers the
inclusion of a geographic indicator to be sufficient to
distinguish the marks. As we have already found, the mark
GRAND HOTEL is highly suggestive, and therefore the scope
of protection to which the cited registration is entitled
is quite limited. In this regard, the Board has made the
following observation:
The question involved in this
proceeding is what measure of
protection should be afforded a mark
like “ROYAL.” It is settled that,
unlike in the case of arbitrary or
unique designations, suggestive or
highly suggestive terms, because of
their obvious connotation and possible
frequent employment in a particular
trade as a part of trade designations,
have been considered to fall within the
category of “weak” marks, and the scope
of protection afforded these marks have
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Serial No. 76692673
been so limited as to permit the use
and/or registration of the same mark
for different goods or of a composite
mark comprising this term plus other
matter, whether such matter be equally
suggestive or even descriptive, for the
same or similar goods. The term
“ROYAL”, because of its obvious
laudatory suggestive connotation, has
been considered by various tribunals to
be a “weak” mark entitled to a narrow
orbit of protection in determining the
question of the likelihood of
confusion. [Internal citations
omitted]. As stated in Peerless Electric
Company v. Peerless Electric, Inc., supra
[103 USPQ 283 (NY Sup. Ct., 1954)].

“There are certain names which are
given different tags- descriptive,
laudatory, or the like- which are
technically known as ‘weak,’
meaning that an exclusive right in
them is hard to obtain. Such names
as ‘Superior,’ ‘Majestic,’ and
‘Royal’ are so common that the use
in and of itself imports nothing
* * *.”

The character of the term “ROYAL” and
the limited orbit of protection to be
afforded such a term is clearly
revealed by the third-party
registrations made of record by
applicant. That is, they are
indicative that this Office has, over
the years, treated “ROYAL” as a “weak”
mark that could not be exclusively
appropriated in the food field thereby
permitting the registration of “ROYAL”,
per se, to different entities for
different food products and composite
marks containing this term for like
goods on the basis that there is no
likelihood of confusion as to source.

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Serial No. 76692673
Standard Brands Incorporated v. Peters, 191 USPQ 168, 172
(TTAB 1976). See also Glamorene Products Corp. v. Earl
Grissmer Co., Inc., 203 USPQ 1090, 1097 (TTAB 1978) (“Both
marks [RINSENVAC and SPRAY ‘N VAC] are highly suggestive of
their products and this only enhances the association of
each mark with its own goods”).
Likewise, viewing the marks GRAND HOTEL and GRAND
HOTELS NYC in the context of the facts and circumstances
presented by the record in this case, we find that the
addition of NYC to applicant’s mark is sufficient to render
applicant’s mark distinguishable from the mark in the cited
registration. In other words, in this case, the strength
or weakness of the mark in the cited registration is the
most important factor. See, e.g., Kellogg Co. v. Pack-Em
Enterprises Inc., 951 F.2d 330, 21 USPQ2d 1142, 1145 (Fed.
Cir. 1991) (“We know of no reason why, in a particular
case, a single duPont factor may not be dispostive. … ‘each
[of the thirteen elements] may from case to case play a
dominant role.’”). Because of the highly suggestive nature
of the mark “Grand Hotel,” the proliferation of registered
“Grand Hotel” marks and the unregistered uses of “Grand
Hotel” marks, the mark “Grand Hotel,” itself, is entitled
to only a very narrow scope of protection or exclusivity of
use. Further, because of the highly suggestive nature of
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Serial No. 76692673
GRAND HOTEL and the number of third-party GRAND HOTEL
marks, we conclude that consumers are able to distinguish
between different GRAND HOTEL marks based on small
differences in the marks, including the addition of a
geographic term. Accordingly, we find that applicant’s
mark GRAND HOTELS NYC for hotel services is not likely to
cause confusion with Registration No. 1250067 for GRAND
HOTEL for hotel services. In view of this finding,
applicant’s mark also is not likely to cause confusion with
the mark in Registration No. 1325324.
Decision: The refusal to register is reversed.
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