My Place Hotels of America, LLC

Trademark Trial and Appeal BoardAug 25, 2017

No. 87026498 (T.T.A.B. Aug. 25, 2017)

This Opinion Is Not a Precedent of the TTAB Mailed: August 25, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re My Place Hotels of America, LLC _____ Serial Nos. 87025045 and 87026498 (consolidated) _____ Marsha G. Gentner of Dykema Gossett PLLC, for My Place Hotels of America, LLC. Leslee Friedman, Trademark Examining Attorney, Law Office 120, David Miller, Managing Attorney. _____ Before Bergsman, Hightower, and Goodman, Administrative Trademark Judges. Opinion by Hightower, Administrative Trademark Judge: Applicant My Place Hotels of America, LLC seeks registration on the Principal Register of the following two marks for “promoting hotel and motel services by means of an incentive award program,” in International Class 35: MY PLACE VIP CLUB, in standard characters and with “CLUB” disclaimed (the “’045” application),1 and 1 Application Serial No. 87025045, filed May 4, 2016, alleging a first use date of November 20, 2015 and use in commerce as of April 21, 2016. Serial Nos. 87025045 and 87026498 (consolidated) - 2 - with “ECONOMY EXTENDED STAY” disclaimed (the “’498” application).2 The Trademark Examining Attorney refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), due to a likelihood of confusion with the marks MY PLACE REWARDS, in standard characters and with “REWARDS” disclaimed,3 and MYPLACE in standard characters,4 both previously registered on the Principal Register to the same owner for the following services in International Class 35: Customer loyalty services for commercial and promotional purposes; providing incentive award programs for customers through issuance and processing of loyalty points for purchase of company’s goods and services. After the Trademark Examining Attorney made the refusals final, Applicant requested reconsideration as to application Serial No. 87025045 and disclaimed CLUB, as required by the Examining Attorney. Reconsideration was denied. Applicant has appealed both refusals to this Board. 2 Application Serial No. 87026498, filed May 5, 2016, alleging a first use date of November 20, 2015 and use in commerce as of April 21, 2016. The description of the mark states: “The mark consists of a quadrilateral with slightly curved sides of equal length, bordered in black with a yellow background, overlapped at the top by a red circle with a black outline, on top of which is the word ‘MY’ in white lettering with black outline; below the circle is the word ‘PLACE’ in black, below which is the wording ‘ECONOMY EXTENDED STAY’ in red; to the right of the quadrilateral is a red vertical line, to the right of which is the word ‘VIP’ in black, with the dot over the ‘I’ in VIP comprised of a red circle with a black border, superimposed over which is the word ‘MY’ in white lettering with black outline.” 3 Registration No. 4285835, issued February 5, 2013. 4 Registration No. 4862862, issued December 1, 2015. Serial Nos. 87025045 and 87026498 (consolidated) - 3 - I. Consolidation We have considered all arguments and evidence filed in each case. These appeals present common questions of law and fact and highly similar records, despite the variations between the marks. Therefore, in the interest of judicial economy, we consolidate the cases and decide them in this single opinion. In re Anderson, 101 USPQ2d 1912, 1915 (TTAB 2012). We affirm the refusal to register as to each application. II. Evidentiary Objection Applicant submitted three attachments comprising at least 25 pages of material to each of its opening briefs. The Examining Attorney objects and asks us to disregard any new evidence on the ground that it is untimely under Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). The record should be complete before an appeal is filed. Id.; see also, e.g., In re Weiss Watch Co., 123 USPQ2d 1200, 1204 (TTAB 2017); In re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014). Applicant responds, however, that the material attached to its brief is not new evidence, but rather comprises a copy of its specimen (which is the same for each application); a 1997 article from the International Journal of Research in Marketing titled “Loyalty programs and their impact on repeat-purchase loyalty patterns,” cited in its briefs; and dictionary definitions of “VIP” and “reward,” of which Applicant indirectly asks the Board to take judicial notice. See ’045 Appeal Brief at 11 n.8, 4 TTABVUE 14; ’498 Appeal Brief at 11 n.7, 4 TTABVUE 14; ’045 Reply Brief at 2, 7 TTABVUE 3; Serial Nos. 87025045 and 87026498 (consolidated) - 4 - ’498 Reply Brief at 1-2, 7 TTABVUE 2-3 (stating that the Board may take judicial notice of dictionary definitions). Because Applicant’s specimen was of record as part of the application file and we may take judicial notice of dictionary definitions, the Examining Attorney’s objection is denied as to Attachments B and C for the ’045 application and Attachments A and B for the ’498 application. The Examining Attorney’s objection is granted, however, as to the journal article filed as Attachment A to the appeal brief for the ’045 application and Attachment C for the ’498 application. We are not persuaded by Applicant’s argument that “such scholarly articles are not ‘evidence’, any more than, for example, a citation to a treatise, such as McCarthy.” ’045 Reply Brief at 1-2, 7 TTABVUE 2-3; ’498 Reply Brief at 2, 7 TTABVUE 3. We apply the same reasoning here as when we declined to consider an untimely article from The National Law Journal in In re Procter & Gamble Co., 105 USPQ2d 1119, 1120 (TTAB 2012): We reject this analogy. The potential value to applicant of this article is not that it would provide a commentary on legal principles, but would have probative evidentiary value . . . . Because it is being offered for its evidentiary value but was not properly introduced, we have given it no consideration. Applicant also argues that the Examining Attorney asserted a new argument in her brief, so that “Applicant should be permitted to address this wholly new argument raised for the first time on appeal, in the EA Brief, including with ‘new evidence’.” Reply Brief for each application at 2 n.1, 7 TTABVUE 3. This argument obviously fails, given that Applicant submitted the untimely evidence with its opening brief, Serial Nos. 87025045 and 87026498 (consolidated) - 5 - before the Examining Attorney filed a brief.5 Moreover, an applicant who wishes to introduce additional evidence after an appeal has been filed may submit a request to the Board to suspend the appeal and remand the application for further examination. Trademark Rule 2.142(d). In any event, consideration of the journal article would not change the outcome of this appeal as to either application. Applicant also attached a copy of the respective Final Office Action for each application to its reply briefs. The Board discourages the practice of attaching to appeal briefs material already of record. See TBMP § 1203.01 (June 2017) and cases cited at n.3; see also TBMP § 1203.02(e) (June 2017) (“It is not necessary to attach as exhibits to a brief evidence that is already in the application because the appeal brief is associated with the application. Such evidence should not, as a matter of course, be resubmitted as exhibits to the brief.”). The better practice is to simply cite to the record: “Citation to evidence in briefs should be to the documents in the electronic application record by date, the name of the paper under which the evidence was submitted, and the page number in the electronic record.” Trademark Rule 2.142(b)(3), 37 C.F.R. § 2.142(b)(3); see also TBMP § 1203.01 (June 2017) (providing further detail concerning evidentiary citation). 5 Even if the Examining Attorney did assert a new argument in her brief, the Board need not find that an Examining Attorney’s rationale was correct in order to affirm the refusal to register, but may rely on different reasoning. In re AFG Indus. Inc., 17 USPQ2d 1162, 1163 (TTAB 1990) (stating that “the Board reviews an Examining Attorney’s decision on appeal to determine if the refusal to register was correctly made. In doing so, the Board need not adopt the rationale of the Examining Attorney.”). Serial Nos. 87025045 and 87026498 (consolidated) - 6 - III. Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all 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 Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, however, two key considerations are the similarities between the marks and the similarities between the goods or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods and differences in the marks.”). A. Similarity of the Services, Channels of Trade, and Classes of Customers We begin our analysis with the second and third du Pont factors, the similarity of the services, channels of trade, and classes of customers. We must look to the services as identified in the involved applications and cited registrations, not to any extrinsic evidence of actual use. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014). The services recited in the two subject applications are identical to each other, as are those in the two cited registrations: Serial Nos. 87025045 and 87026498 (consolidated) - 7 - Registrant’s Services Applicant’s Services customer loyalty services for commercial and promotional purposes; providing incentive award programs for customers through issuance and processing of loyalty points for purchase of company’s goods and services promoting hotel and motel services by means of an incentive award program Applicant’s services are highly similar to, if not subsumed within, Registrant’s more broadly identified services. Both “customer loyalty services for commercial and promotional purposes” and “providing incentive award programs for customers through issuance and processing of loyalty points for purchase of company’s goods and services” may include “promoting hotel and motel services by means of an incentive award program.” See In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). We find the identified services to be, at a minimum, highly similar. Because there are no limitations as to channels of trade or classes of purchasers in the description of services in the cited registrations, we presume that Registrant’s services move in all channels of trade normal for such services and are available to all potential classes of ordinary consumers. Citigroup Inc. v. Capital City Bank Group Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir. 2011); In re Integrated Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016). While Applicant’s services are directed to hotels and motels, Registrant’s services are identified in a manner that Serial Nos. 87025045 and 87026498 (consolidated) - 8 - includes hotel and motel services. Therefore, there is no distinction between the channels of trade and classes of customers. Applicant argues that the second type of services identified by Registrant, “providing incentive award programs for customers through issuance and processing of loyalty points for purchase of company’s goods and services,” are limited to Registrant’s goods and services. ’045 Appeal Brief at 6, 4 TTABVUE 9; ’498 Appeal Brief at 13, 4 TTABVUE 15. Therefore, Applicant has submitted evidence concerning Registrant, its other applications and registrations, and the specific goods and services it offers — children’s apparel and accessories — distinguishing them from Applicant’s own hotel and motel services.6 Applicant argues that the use of this extrinsic evidence is permissible to clarify the identification of services in the cited registrations. ’045 Appeal Brief at 7, 4 TTABVUE 10; ’498 Appeal Brief at 13, 4 TTABVUE 16. These arguments and evidence are not persuasive, for two reasons. First, we do not agree that Registrant’s recitation is unclear or ambiguous, permitting Applicant to use extrinsic evidence to limit the identification to children’s apparel and accessories. Second, even if we accept Applicant’s argument and find these services distinguishable, no such limitation can be read into Registrant’s remaining services: “customer loyalty services for commercial and promotional purposes.” As stated supra, these services on their face are unambiguous and highly similar to, if not 6 See ’045 application, Attachments A and B to October 10, 2016 Response to Office Action at TSDR 8-57; ’498 application, Attachments A and B to October 10, 2016 Response to Office Action at TSDR 9-58. Serial Nos. 87025045 and 87026498 (consolidated) - 9 - legally overlapping with, Applicant’s “promoting hotel and motel services by means of an incentive award program.” A likelihood of confusion may be found with respect to a particular class based on any item within the identification of goods for that class. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In our likelihood of confusion analysis, these findings under the second and third du Pont factors weigh in favor of finding a likelihood of confusion. B. Similarity of the Marks The first du Pont likelihood of confusion factor focuses on “the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). “The proper test is not a side-by-side comparison of the marks, but instead whether the marks are sufficiently similar in terms of their commercial impression such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). In this case, the average purchaser is an ordinary consumer of hotel or motel services. Serial Nos. 87025045 and 87026498 (consolidated) - 10 - Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, our analysis cannot be predicated on dissecting the marks into their various components. In re C.H. Hanson Co., 116 USPQ2d 1351, 1353 (TTAB 2015). On the other hand, in articulating reasons for reaching a conclusion on the issue of confusion, 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 a consideration of the marks in their entireties. Indeed, this type of analysis appears to be unavoidable. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Here, we focus on Registration No. 4285835 for the mark MY PLACE REWARDS, which we find to be the cited mark more relevant to our analysis. Accordingly, if we find a likelihood of confusion as to this mark, we need not find it as to Registrant’s mark MYPLACE. On the other hand, if we do not find a likelihood of confusion with Registrant’s mark MY PLACE REWARDS, we also would not reach that conclusion as to the other cited registration. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). 1. MY PLACE VIP CLUB (the ’045 application) We begin with Applicant’s mark MY PLACE VIP CLUB, which first features the phrase MY PLACE, identical to the cited mark MY PLACE REWARDS. As we often have said, the lead element in a mark has a position of prominence; it is likely to be noticed by consumers and so to play a dominant role in the mark. See, e.g., Palm Bay, 73 USPQ2d at 1692 (stating that VEUVE is a prominent part of the mark VEUVE CLICQUOT because it is the first word in the mark); Century 21 Real Serial Nos. 87025045 and 87026498 (consolidated) - 11 - Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (stating that consumers will first notice the identical lead word on encountering the marks). “[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered.” Presto Prods. Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) We find that to be the case here. MY PLACE VIP CLUB and MY PLACE REWARDS share the dominant and distinctive lead phrase MY PLACE, leaving only VIP CLUB and REWARDS, respectively. The disclaimed terms CLUB and REWARDS are descriptive or generic in association with customer loyalty and incentive award programs. While the identical lead term lends visual similarity to the marks, the four-syllable phrase VIP CLUB aurally distinguishes Applicant’s mark somewhat from the cited mark. However, the meaning, connotation, and overall commercial impression of the two marks as a whole are highly similar. In addition, the Examining Attorney submitted evidence that the phrase VIP CLUB is used descriptively or generically in association with customer loyalty and incentive award programs. Examples of these uses include: Serial Nos. 87025045 and 87026498 (consolidated) - 12 - 1. Sheehy VIP Club for vehicle purchasers7 2. Catoctin Creek VIP Club for a distillery8 7 October 26, 2016 Final Office Action at TSDR 3 (from sheehy.com/SheehyVIPclub). 8 Id. at TSDR 2 (from catoctincreekdistilling.com/vip-club). Serial Nos. 87025045 and 87026498 (consolidated) - 13 - 3. Mr. Clean Car Wash V.I.P. Club9 4. Boston Market VIP Club10 For these reasons, we find MY PLACE VIP CLUB and MY PLACE REWARDS, considered in their entireties, to be similar under the first du Pont factor. 9 August 22, 2016 Office Action at TSDR 11 (from mrcleancarwash.com/v.i.p.club). 10 Id. at TSDR 7 (from bostonmarket.com/vip-club/). Serial Nos. 87025045 and 87026498 (consolidated) - 14 - 2. (the ’498 application) We next consider Applicant’s composite mark. Although we assess each mark in its entirety, on a case-by-case basis, wording often is considered the dominant feature of a mark comprising both words and design elements. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016); In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012). Applicant argues that this principle does not apply to its mark because it is used visually, through the Internet, rather than spoken aloud. See ’498 Appeal Brief at 8- 9, 4 TTABVUE 11-12. We find that the wording in Applicant’s mark remains the dominant feature even if the mark is used primarily on the Internet, as consumers will read the wording in the mark and are likely to use it to search for, or otherwise electronically refer to or request, Applicant’s services. Because the disclaimed wording ECONOMY EXTENDED STAY is descriptive and in comparatively tiny font, we find that it contributes little to the commercial impression made by Applicant’s composite mark as a whole, and the dominant elements are MY PLACE and MY VIP. Although the colorful design features of Applicant’s mark distinguish it visually from the cited mark, we agree with the Examining Attorney that those design features are simple carrier elements and a vertical line that do not create a commercial impression apart from the word elements of the mark. See In re Serial Nos. 87025045 and 87026498 (consolidated) - 15 - Benetton Grp. S.p.A., 48 USPQ2d 1214, 1215-16 (TTAB 1998) (“In particular, common geometric shapes such as circles, squares, rectangles, triangles and ovals, when used as backgrounds for the display of word marks, are not regarded as trademarks for the goods to which they are applied absent evidence of distinctiveness of the background design alone.”). The text in Applicant’s mark is lightly stylized in a font and manner that Registrant also could employ for its standard character mark. Applicant argues that it “is unable even to discern how Applicant’s mark would be spoken,” ’498 Appeal Brief at 8, 4 TTABVUE 11, but we find it most likely that consumers will follow the normal English language convention of reading from left to right and top to bottom, focusing first on the wording grouped in the carrier to the left of the bar and second on the phrase grouped to the right, MY VIP. Compared again to the cited mark MY PLACE REWARDS, Applicant’s mark shares the dominant and distinctive lead phrase MY PLACE, leaving ECONOMY EXTENDED STAY MY VIP and REWARDS, respectively. These additional terms distinguish the sound of the marks. We find, however, that MY VIP, like REWARDS, has descriptive significance in association with customer loyalty and incentive award programs. The marks thus convey similar meanings, and the overall commercial impressions made by the two marks are similar when they are considered as a whole. For all of these reasons, the first du Pont factor supports a finding that confusion with the cited mark MY PLACE REWARDS is likely as to both of Applicant’s marks. Serial Nos. 87025045 and 87026498 (consolidated) - 16 - C. The Conditions under Which and Buyers to Whom Sales Are Made Finally, we turn to Applicant’s arguments under the fourth du Pont factor: “The conditions under which and buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” Id. at 567. Applicant argues that consumers will encounter Applicant’s marks in the context of purchasing, or considering the purchase of, Applicant’s hotel and motel services. See ’045 Appeal Brief at 14, 4 TTABVUE 17; ’498 Appeal Brief at 15, 4 TTABVUE 18. As we pointed out in the discussion supra of the second and third du Pont factors, however, Registrant’s services as recited are broad enough to encompass hotel and motel services. We find the fourth du Pont factor to be neutral. IV. Conclusion We have found that the first, second, and third du Pont factors favor a likelihood of confusion, while the fourth factor is neutral. Applicant and the Examining Attorney have not presented evidence regarding other du Pont factors. To the extent that such du Pont factors may nonetheless be applicable, we treat them as neutral. We find that Applicant’s marks are likely to cause confusion with the mark in cited Registration No. 4285835 when used in association with the services identified in the applications. Decision: The refusals to register both of Applicant’s marks under Section 2(d) of the Trademark Act are affirmed.