Park Hotel Management Pte Ltd.v.Park Hotels & Resorts, Inc.

Trademark Trial and Appeal Board

Feb 5, 2020

91233165 (T.T.A.B. Feb. 5, 2020)

This Opinion is not a
Precedent of the TTAB

Oral Hearing: August 7, 2019 Mailed: February 5, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Park Hotel Management Pte Ltd.
v.
Park Hotels & Resorts, Inc.

_____

Opposition No. 91233165

_____

Leigh Ann Lindquist of Sughrue Mion, PLLC
for Park Hotel Management Pte Ltd.

Anna Kurian Shaw, Julia Anne Matheson and Katherine Bastian Phillips
of Hogan Lovells US LLP for Park Hotels & Resorts, Inc.

_____

Before Adlin, Goodman and Dunn,
Administrative Trademark Judges.

Opinion by Goodman, Administrative Trademark Judge:
Park Hotels & Resorts, Inc. (“Applicant”) filed an application to register the mark
PARK HOTELS & RESORTS (in standard characters, HOTELS & RESORTS
disclaimed) for the following services in International Class 35: “Investment services,
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namely, asset acquisition, consultation, development and management services; Real
estate investment trust services.”1
Park Hotel Management Pte Ltd. (“Opposer”) opposes registration of Applicant’s
mark on the ground of likelihood of confusion. Opposer has pleaded prior use of the
marks PARK HOTEL and P PARK HOTEL and design by its predecessor in interest
in connection with “hotel reservation and booking services, as well as related travel
services” in the United States since the 1960’s.2 Opposer also alleged ownership of
two pending trademark applications (87291807 and 87291829) for PARK HOTEL and
P PARK HOTEL and design. 3
Applicant filed an answer denying the salient allegations in the notice of
opposition.4
Each party filed a trial brief and Opposer filed a reply brief. The parties appeared
at an oral hearing.

1 Application Serial No. 87057391 was filed on June 2, 2016 based upon Applicant’s allegation
of a bona fide intention to use the mark in commerce under Section 1(b) of the Trademark
Act, 15 U.S.C. § 1051(b).
References to the briefs and the record refer to the Board’s TTABVUE docket system.
2 Notice of Opposition, ¶¶ 2 and 3.
3 Id. at ¶ 4.
4 Applicant asserted the affirmative defense of “no likelihood of confusion” which is an
amplification of its denials, and the affirmative defense of unclean hands. However,
Applicant has made no argument related to its unclean hands defense beyond a mere passing
and conclusory reference in a footnote. Therefore, the unclean hands defense will be given no
further consideration.
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The Record
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of the involved application. In addition, Opposer
introduced the declaration testimony of Law Ching Hung, Director of Park Hotel
Management Pte Ltd, (“first Hung declaration” and “second Hung declaration,” 23
TTABVUE; 63 TTABVUE; confidential version, 24 TTABVUE); and filed notices of
reliance (“NOR”) upon third-party registrations (first NOR, 22 TTABVUE; third
NOR, 60 TTABVUE), on Internet materials (second NOR, 25 TTABVUE; fourth NOR,
61 TTABVUE), and one of Applicant’s Interrogatory responses (no. 11) (fifth NOR, 62
TTABVUE).
Applicant introduced the declaration testimony of Ian C. Weissman, Senior Vice
President, Corporate Strategy, of Park Hotels & Resorts Inc. (“Weissman
declaration,” 46 TTABVUE; confidential version, 26 TTABVUE), Katherine Bastian
Phillips, counsel for Applicant (“Bastian Phillips declaration,” 47 TTABVUE;
confidential version, 39 TTABVUE), and Sean M. Dell’Orto, Executive Vice President,
Chief Financial Officer, and Treasurer, of Park Hotels & Resorts Inc. (“Dell’Orto
declaration,” 53 TTABVUE; confidential version, 27 TTABVUE; exhibits to Dell’Orto
declaration, 48-52, 54-59 TTABVUE; and confidentially filed exhibits5 28-35
TTABVUE). In addition, Applicant filed Notices of Reliance on third-party

5 Applicant initially filed all of its testimony and accompanying exhibits (5000 pages) under
seal. The Board required Applicant to file for the public record redacted copies of the
declarations and exhibits designated confidential as well as all non-confidential exhibits. The
Dell’Orto declaration consisted of 9 exhibits broken into subparts for purposes of ESTTA
filing.
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registrations (first NOR, 36 TTABVUE), third-party webpages and third-party news
articles, (second NOR, 38 TTABVUE), file wrappers for Application Serial Nos.
87057391,6 87291807, 87291829, and Internet materials (third NOR, 37 TTABVUE),
and a replacement exhibit for the second NOR (fourth NOR, 40 TTABVUE).7
Preliminary Matters
Applicant has objected to Exhibit 5 (a list of website traffic for Opposer’s website
and social media accounts), attached to the first Hung declaration (confidential
version, 24 TTABVUE), under Fed. R. Evid. 602, 901(a), and 1002, arguing that
Opposer failed to authenticate or lay a proper foundation for this information, its
accuracy cannot be verified, and the summary provided is not the best evidence.
Applicant’s brief, 67 TTABVUE 53. Opposer responds that Mr. Hung has laid a
foundation for this information and that Opposer need not submit the underlying
analytics report for purposes of the best evidence rule because a company can compile
this information internally. Opposer’s reply brief, 69 TTABVUE 13.
The declaration states “[a]ttached as Exhibit 5 is information regarding web
traffic from the United States to relevant websites.” First Hung declaration, ¶ 9, 23
TTABVUE 3. This statement fails to lay a foundation or authenticate this document
because it describes no personal knowledge by Mr. Hung of Exhibit 5 nor does it

6 It was not necessary for Applicant to submit the file wrapper for the involved application as
it is already of record.
7 Applicant indicated in its third NOR that it “intends to rely on the exhibits cited in
Opposer’s First and Second Notices of Reliance, as well as the statements made in the
declaration of Law Hung Chin [sic], as well as the exhibits appended thereto, which are
relevant for purposes of refuting Opposer’s contentions and allegations which rely on and
relate to those materials.” Applicant’s third NOR, 37 TTABVUE 4.
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describe any other manner in which Mr. Hung is otherwise competent to testify about
the author, origin or contents of this document. The document itself lacks identifying
information to support any conclusion about the author or origin. First Hung
declaration, confidential version, 24 TTABVUE. Because the exhibit is
unauthenticated, we exclude it from the evidence. Fed. R. Evid. 602 and 901(b)(1).
Applicant has objected to paragraphs 3 and 4 of the second Hung declaration,
asserting that Mr. Hung lacks personal knowledge regarding real estate investment
trusts in the United States. Applicant’s brief, 67 TTABVUE 53. Alternatively,
Applicant argues that this testimony constitutes undisclosed and improper expert
witness testimony.8 Id. Opposer counters that Mr. Hung is qualified to offer testimony
relating to real estate investment trusts through his position as director of a hotel
group for over a decade and his experience in the hotel industry dating back to 2004.
Opposer’s reply brief, 69 TTABVUE 13, 15.
Mr. Hung is the top executive (director) of Opposer. He did not need to be disclosed
as an expert witness in order to be able to testify to facts and matters within his own
personal knowledge and industry experience. We find that Mr. Hung has the personal
knowledge to testify on the subject matter of real estate investment trusts and that
he could offer lay opinion witness testimony based on his industry experience. The
objections to paragraphs 3 and 4 of the second Hung declaration are overruled. Fed.
R. Evid. 602, and 701; Fed. R. Evid. 701 Advisory Committee’s Notes (2000).

8 Applicant had moved to strike this testimony before briefing, but the Board deferred
consideration, advising Applicant that it must renew the objections in its brief on the case to
be considered. 64 and 65 TTABVUE.
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Applicant also objects to the fourth notice of reliance, which consists of printouts
from Internet websites, on the basis of inadmissible hearsay, lack of personal
knowledge by the authors, and improper expert witness testimony.9 Applicant’s brief,
67 TTABVUE 53. Opposer responds that the exhibits are properly submitted under
a notice of reliance as printed publications. Opposer’s reply brief, 69 TTABVUE 15.
Opposer also states that it is not offering the exhibits for the truth of the matter but
for what they show on their face. Id.
We overrule Applicant’s objections based on Fed. R. Evid. 602 and 702 as these
exhibits were properly submitted under Trademark Rule 2.122(e), 37 C.F.R.
§ 2.122(e). However, we do not reach the hearsay objection for two of these exhibits
(Motley Fool and The Balance articles) because they unauthenticated, lacking the
URL and date accessed. Although Opposer’s counsel provides the general website
address in the notice of reliance, counsel failed to provide the complete URL as well
as the date the website pages were accessed or published. See Trademark Rule
2.122(e)(2), 37 C.F.R. § 2.122(e)(2); Safer Inc. v. OMS Invs. Inc., 94 USPQ2d 1031,
1039 (TTAB 2010). Cf. In re Mueller Sports Medicine, Inc., 126 USPQ2d 1584, 1586-
87 (TTAB 2018) (discussing requirement for complete URL and date for both
examining attorneys and applicants). Therefore, these two exhibits are
unauthenticated, and we do not consider them.
We sustain Applicant’s hearsay objections to the fourth notice of reliance to the
extent that the investor.gov exhibit is not a government publication subject to a

9 Opposer states in the NOR that these materials are relevant as “evidence that individual
investors are able to invest in REITs.” Opposer’s fourth NOR, 61 TTABVUE 3.
Opposition No. 91233165
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hearsay exception, and to the extent that it and the NAREIT reit.com exhibit are
offered for the truth of any matter stated therein, i.e., “evidence that individual
investors are able to invest in REITs.” Opposer’s fourth NOR, 61 TTABVUE 4-15.
See, e.g., 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1717 n.2 (TTAB 2007) (materials
made of record by notice of reliance under 37 C.F.R. § 2.122(e) are not admissible for
the truth of the matters contained therein, unless a competent witness has testified
to the truth of such matters). However, these documents are admissible for what they
show on their face, which is that “Investing in REITS” was the subject of an article
that appeared on the reit.com website apparently sponsored by NAREIT and that
information about real estate investment trusts appeared on the investor.gov
website. Seaguard Corp. v. Seaward Int’l., Inc., 223 USPQ 48, 49 n.4 (TTAB 1984)
(citation omitted).
Standing
To prevail on the likelihood of confusion ground under Section 2(d) of the
Trademark Act, it is Opposer’s burden to prove by a preponderance of the evidence
priority of use, or prior registration, (or both), and likelihood of confusion.
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1848 (Fed. Cir.
2000).
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition proceeding, a plaintiff must show
“both a ‘real interest’ in the proceedings as well as a ‘reasonable basis’ for its belief of
damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d
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1058, 1062 (Fed. Cir. 2014) (citation omitted); Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023, 1025 (Fed. Cir. 1999).
Neither party discussed standing in their briefs.
Opposer’s witness testified that Opposer is the owner of two pending trademark
applications (87291807 and 87291829) for the marks PARK HOTEL and P PARK
HOTEL and design that both cover services in International Classes 35 and 43,
including hotel reservation and booking services. First Hung declaration, ¶ 5, 23
TTABVUE 3. Opposer submitted Trademark Status and Document Retrieval
(“TSDR”) printouts of its application files. First Hung declaration, exhibit 1, 23
TTABVUE 7-15. Applicant also submitted the complete file for Opposer’s 87291807
application for the mark PARK HOTEL which shows that the Office has suspended
the application due to Applicant’s previously filed application. Applicant’s third NOR,
37 TTABVUE 44-47. Opposer’s witness testimony, the TSDR printout, and the
application file are sufficient to establish Opposer’s standing. See Toufigh v. Persona
Parfum, Inc., 95 USPQ2d 1872, 1874 (TTAB 2010) (standing established based solely
on testimony that petitioner filed an application for an identical mark for goods that
are similar to those in the respondent’s registration); Fiat Group Automobiles S.p.A.
v. ISM, Inc., 94 USPQ2d 1111, 1112 (TTAB 2010) (the filing of opposer’s application
and the Office’s action taken in regard to that application, if proved, would establish
opposer’s standing).
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Priority
To prevail on a claim of likelihood of confusion based on ownership of common-law
rights in a mark, the mark must be distinctive, inherently or otherwise, and Opposer
must show priority of use. See Otto Roth & Co. v. Universal Foods Corp., 640 F.2d
1317, 209 USPQ 40, 44 (CCPA 1981). Absent argument or evidence showing
otherwise, we find Opposer’s PARK HOTEL and P PARK HOTEL and design marks
are distinctive. Wet Seal Inc. v. FD Mgmt., Inc., 82 USPQ2d 1629, 1634 (TTAB 2007).
See also Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1023 (TTAB 2009)
(“Respondent has not raised an issue as to the distinctiveness of petitioner’s mark or
otherwise put petitioner on notice of this defense, and therefore we find that the mark
is distinctive.”).
Opposer argues that its activities of advertising, promoting and offering booking
services directly to United States customers or through travel agents predates any
date upon which Applicant can rely.10
In the notice of opposition, Opposer relies on its United States common law rights
in the marks PARK HOTEL and 11 in connection with “hotel

10 Opposer believes there is no dispute as to priority. 66 TTABVUE 14. Applicant argues that
Opposer’s priority, if any, “is only with respect to Opposer’s Use-Based Services which were
actually used in commerce in connection with Opposer’s Marks prior to Applicant’s filing
date.” Applicant’s brief, 67 TTABVUE 9. The parties filed no stipulation with the Board as to
priority.
11 Opposer alleges that its manner of use of the mark in the United States is as shown in the
filed applications: “Opposer’s marks in its pending U.S. trademark applications and its use
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booking and reservation” services and “related travel services.”12 Notice of Opposition
¶¶ 2, 3, and 8, 1 TTABVUE. Applicant relies solely on its constructive use date of
June 2, 2016. See Syngenta Crop Prot. Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119
(TTAB 2009) (“applicant may rely without further proof upon the filing date of its
application as a ‘constructive use’ date for purposes of priority.”). Opposer’s pleaded
applications were filed on January 6, 2017, and cannot be relied on to establish
Opposer’s priority.
In a case involving common law rights, “the decision as to priority is made in
accordance with the preponderance of the evidence.” Hydro-Dynamics Inc. v. George
Putnam & Co. Inc., 811 F.2d 1470, 1 USPQ2d 1772, 1773 (Fed. Cir. 1987). See also
Standard Knitting Ltd. v. Toyota Jidosha Kabushiki Kaisha, 11 USPQ2d 1917, 1929
(TTAB 2006) (“In order to establish priority based on common law rights, opposer’s
burden is to demonstrate by a preponderance of the evidence proprietary rights in
TUNDRA and TUNDRA SPORT for clothing prior to June 1, 1998, the filing date of
applicant’s intent-to-use application”). Opposer must establish priority by competent
evidence of its allegedly prior common law use of its marks PARK HOTEL and
through actual use or use analogous to trademark use. See

of such marks in the USA are collectively referred to as PARK HOTELS Marks.” Notice of
Opposition ¶ 5, 1 TTABVUE.
12 The “related services” alleged in the notice of opposition are services offered by Opposer’s
hotels, located throughout Asia. Notice of Opposition, ¶ 3, 1 TTABVUE.
Opposition No. 91233165
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Giersch v. Scripps Networks, Inc., 90 USPQ2d at 1022. Opposer has not alleged use
analogous to trademark use so we focus on actual use. See Cent. Garden & Pet Co. v.
Doskocil Mfg. Co., 108 USPQ2d 1134, 1142 (TTAB 2013) (“claims of use analogous to
service mark use must be pleaded”). Oral testimony, if sufficiently probative, is
normally satisfactory to establish priority of use. Powermatics, Inc. v. Globe Roofing
Prods. Co., 341 F.2d 127, 144 USPQ 430, 432 (CCPA 1965). In considering the
testimony and evidence of priority, “we look at the evidence as a whole, as if each
piece of evidence were part of a puzzle which when fitted together, establishes prior
use.” See West Florida Seafood Inc. v. Jet Restaurants Inc., 31 F.3d 1122, 31 USPQ2d
1660, 1663 (Fed. Cir. 1994).
Much of Mr. Hung’s testimony was directed towards establishing Opposer’s use
prior to the filing date of Applicant’s application, but Mr. Hung’s testimony is in many
respects vague and indefinite. Mr. Hung testified that Opposer is part of an Asian
hospitality group that offers hotels in eight countries;13 that its foreign hotel services
have been offered in the United States since 1961;14 that it advertises and promotes

13 In response to Applicant’s requests for admission, Opposer admitted that it is a Singapore-
based property group that operates hotels and offers hospitality services to travelers outside
of the United States and that it does not own or manage any hotels in the United States
under either of Opposer’s PARK HOTEL marks. Bastion Phillips declaration, Opposer’s
responses to requests for admission nos. 36, 38, and 39, 47 TTABVUE 18-19. See also the
unrebutted testimony of Applicant, Dell’Orto declaration, ¶ 18, 53 TTABVUE 9 and
Weissman declaration, ¶ 17, 46 TTABVUE 9 (same) (“Based on my review of PHM’s website
… I understand that PHM owns and operates upscale hotels in Australia, China, Hong Kong,
Indonesia, Japan, Malaysia, the Maldives, Singapore, and South Korea … I understand from
PHM’s website that PHM does not own or operate any hotels in the United States.”); and
Opposer’s brief, 66 TTABVUE 10, which includes this admission.
14 Opposer also points to the declarations submitted, after Examining Attorney inquiry, with
its pleaded applications verifying the dates of use as 1961 for certain of its services.
Applicant’s third NOR, 37 TTABVUE 70, 147. Under Trademark Rule 2.121(a)(1), 37 C.F.R.
Opposition No. 91233165
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its foreign hotel services on its website, Instagram, Facebook, at travel agent events
in the United States; and that it has entered into a marketing arrangement with a
United States travel agency.15 First Hung declaration, ¶¶ 3, 4, 8, 10, 11, 23 TTABVUE
2-4; confidential version, 24 TTABVUE; Opposer’s second NOR, 25 TTABVUE.16 Mr.
Hung also testified about Opposer’s total advertising and marketing expenditures in
the United States for the last three years promoting the PARK HOTEL brand and
services.17 First Hung declaration, ¶ 4, 23 TTABVUE 3; confidential version, 24

§ 2.121(a)(1), we do not consider Opposer’s application file declarations as testimony in this
proceeding. Robinson v. Hot Grabba Leaf, LLC, 2019 USPQ2d 149089 at *4, *7 (TTAB 2019).
But we do note that these averments are consistent with Mr. Hung’s testimony in this
proceeding. Id. at *7 (declaration in application file had probative value in connection with
defense to show inconsistent position). In addition, in connection with Applicant’s requests
for admissions, Opposer has admitted that it has offered its hotel booking and reservation
services to at least one customer per year since 1961 and sold its Class 43 services to at least
one customer per year since 1961. Bastion Phillips declaration, Opposer’s responses to
requests for admission nos. 1, 18 and 19, 47 TTABVUE, 7-8, 13.
15 According to Opposer’s brief, “Park Hotel agents attend travel agent events in the United
States where these agents promote the Park Hotel properties and brand.” 66 TTABVUE 11.
This statement is corroborated by the First Hung declaration and exhibits.
16 Opposer identifies the relevance of its second NOR’s Internet materials as “provid[ing]
background and describ[ing] events Opposer attended and companies with whom Opposer
contracted services.” 25 TTABVUE 3. Although we consider these exhibits only for what they
show on their face, these materials further corroborate Mr. Hung’s testimony and exhibits as
related to Opposer’s marketing and advertising of its PARK HOTEL brand and services in
the United States.
17 The amount spent on advertising and marketing for the last three years in connection with
Opposer’s PARK HOTEL marks has been filed confidentially. We do not rely on Opposer’s
unverified responses to Applicant’s interrogatory nos. 5 and 6 (designated confidential),
submitted by Applicant, (Bastion Phillips declaration, confidential version, 39 TTAVUE),
which provide Opposer’s United States advertising (2015, 2016 and from January-July 2017)
and sales figures (2012-2016, and from January-July 2017) for its Class 35 and Class 43
services generally. See Allstate Insurance Co. v. Healthy America Inc., 9 USPQ2d 1663, 1665
and n.3 (TTAB 1988). (An attorney for a corporation may sign and swear to answers to
interrogatories addressed to the corporation.). Cf. Daniel J. Quirk, Inc. v. Village Car Co.,
120 USPQ2d 1146, 1153 n.28 (TTAB 2016) (unverified answers to interrogatories are not a
valid basis for factual findings on summary judgment) (citations omitted). Here, Opposer’s
counsel’s signed answers were unaccompanied by a verification attesting to their accuracy.
Opposition No. 91233165
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TTABVUE. As to the hotel booking and reservation services, Mr. Hung specifically
testified that “[c]ustomers from the United States are able to make reservations at
Opposer’s website (www.parkhotelgroup.com) for Opposer’s hotels.” First Hung
declaration, ¶ 7, 23 TTABVUE 4. Mr. Hung did not testify as to specific dates that
the alleged booking and reservation services were offered to United States customers
and points to undated webpages on Opposer’s website that allow for booking and
reservations of Opposer’s foreign hotels by consumers. Nor did Mr. Hung specifically
testify about the advertising and marketing of its hotel booking and reservation
services. Mr. Hung’s testimony indicates that “[f]or many years, Opposer has entered
into agreements with travel agents in the United States for booking of rooms at
Opposer’s hotels.”18 First Hung declaration, ¶ 12, 23 TTABVUE 4. Mr. Hung provided
exhibits under seal in the form of contracts with travel agencies to support this
testimony.19 First Hung declaration, exhibit 11; confidential version, 24 TTABVUE.
As stated, the accompanying exhibits have been filed confidentially, and we
discuss them in general terms. However, the dates of use evidenced by the contracts,
the service mark use in connection with hotel booking and reservation services, and

18 According to Opposer’s brief, Opposer “maintains relationship [sic] with travel agents in
the United States whom book rooms at Park Hotel properties for U.S. customers.” 66
TTABVUE 10. This statement is corroborated by the travel agent contracts submitted under
seal with the First Hung declaration, exhibit 11, confidential version, 24 TTABVUE. Opposer
also states that the travel agent agreements provide preferential reservation/booking rates,
which is reflected by the confidentially submitted agreements. Opposer’s brief, 66 TTABVUE
17, First Hung declaration, exhibit 11, confidential version, 24 TTABVUE.
19 Some of the travel agent contracts show trade name use and some show service mark use.
See In re Univar Corporation, 20 USPQ2d 1865 (TTAB 1991); In re America’s Family
Institute, Inc., 155 USPQ 605 (TTAB 1967).
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the common law trade channels are not confidential, so we discuss them specifically.
Trademark Rule 2.116(g), 37 C.F.R. § 2.116(g) (“The Board may treat as not
confidential that material which cannot reasonably be considered confidential,
notwithstanding a designation as such by a party.”); see also Couch/Braunsdorf
Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1461 (TTAB 2014); Interfax
Inc. v. Searchcraft Inc., 21 USPQ2d 1553, 1555 (TTAB 1991) (while service
agreements (contracts) between opposer and its customers were treated as
confidential for the Board proceeding, the nature of opposer’s use of its mark with
customers and potential customers was open and public use of the mark to identify
opposer’s services and supported its claim of priority).
The contracts show that Opposer contracted with travel agencies in 2005, 2007,
2008, 2009, 2016, and 2017 for booking its hotel rooms and that these contracted
reservation and booking services are offered through a reservation telephone hotline,
email and facsimile. First Hung declaration, exhibit 11, confidential filing, 24
TTABVUE. The manners Opposer has used the P Park HOTEL and design mark in
these contracts, on its website, and on social media include the following:
20

20 Based on the manner in which the composite mark P and design PARK HOTEL HONG
KONG is displayed, we consider that P and design PARK HOTEL “creates a separate
commercial impression from the geographic term HONG KONG in smaller type. We also find
that PARK HOTEL has a separate commercial impression from the composite mark due to
the manner of display. Cf. In re Colgate-Palmolive Company, 153 USPQ 695 (TTAB 1967)
Opposition No. 91233165
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and .21 First Hung declaration, exhibit 11, confidential filing, 24
TTABVUE; and exhibit 2, 23 TTABVUE 20; Applicant’s third NOR, exhibit 131, 37
TTABVUE 93.
Considering the evidence as a whole, we find that Opposer has established its
prior use of PARK HOTEL (often displayed as the slightly stylized
) and for hotel reservation and booking
services by a preponderance of the evidence. Accordingly, Opposer has shown priority
of use over Applicant of its PARK HOTEL marks for these services.
Likelihood of Confusion
Our determination under Trademark Act 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) (“DuPont”); 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

(finding that as used, the slogan THE MOST POWERFUL NAME IN CLEANING has a
separate commercial impression from AJAX, although used together).
21 Opposer often uses PARK HOTEL without a design and with a slight stylization along with
the geographic location of the hotel i.e., Park Hotel Clarke Quay, Park Hotel Alexandra, Park
Hotel Farrer Park, Park Hotel Nusa Dua, Bali, Park Hotel Hong Kong, and Park Hotel
Yeongdeungpo Seoul. First Hung declaration, exhibit 2, 20-23 and exhibit 3, 47-49;
Applicant’s third NOR, exhibit 136, 37 TTABVUE 256.
Opposition No. 91233165
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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.”). We discuss the DuPont
factors for which there is relevant argument and evidence.
A. Strength of the Marks and Number and Nature of Similar Marks in Use
with Similar Services
In evaluating the strength or weakness of Opposer’s marks, we are ultimately
trying to gauge the scope of protection to which its marks are entitled. We consider
both conceptual strength, based on the intrinsic nature of the mark itself, and
commercial strength or recognition. In re Chippendales USA Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”). We make these findings under the fifth DuPont factor involving the
“fame” or strength of the prior mark, and under the sixth DuPont factor involving the
number and nature of similar marks in use for similar goods or services. DuPont, 177
USPQ at 567.
As to conceptual strength, evidence that a mark, or an element of a mark, is
commonly adopted by many different registrants may indicate that the common
element has some significance that undermines its conceptual strength as an
indicator of a single source. Third-party registrations can show ‘“that some segment
of the composite marks which both contesting parties use has a normally understood
and well recognized descriptive or suggestive meaning, leading to the conclusion that
Opposition No. 91233165
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that segment is relatively weak.’” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (quoting 2 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition § 11:90). As to commercial
strength, we may find that a mark’s commercial strength is curtailed by extensive
third-party use of similar marks with similar goods or services. Jack Wolfskin
Austrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U.,
797 F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir. 2015); Juice Generation, 115
USPQ2d at 674-75.
Applicant submitted third-party registration evidence to show that the terms
PARK and PARK HOTEL are conceptually weak. Applicant states that the third-
party registrations and applications show that “third parties have commonly applied
for and registered PARK-formative marks in connection with the same, similar or
related services as those covered by the opposed and/or asserted applications in this
proceeding.”22 Applicant’s first NOR, 36 TTABVUE. Opposer has admitted that it is

22 As to the third-party applications submitted by Applicant, we point out that they are
evidence only of the fact that such applications were filed; unlike registrations, they are not
evidence of the weakness of marks. In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB
2016); see also Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1467 n.6
(TTAB 2003) (applications are only probative to show that the application has been filed).
Applicant provided a listing, obtained from a commercial search service, of United States
state-based third-party trademark applications and registrations containing the term PARK.
Applicant did not submit the applications or registrations from the state agencies themselves.
This submission has little probative value. See National Football League v. Jasper Alliance
Corp., 16 USPQ2d 1212, 1215 n.3 (TTAB 1990) (“It is well settled that a search report does
not constitute evidence of the existence of a registration or use of a mark”) (citing In re Hub
Distributing, Inc., 218 USPQ 284 (TTAB 1983)). Applicant also submitted a listing of
international registrations obtained from a commercial search service that contain the term
PARK. Aside from the submission being provided by a commercial search service,
international registrations are irrelevant to the strength or weakness of the term PARK in
the United States.
Opposition No. 91233165
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aware of marks that are registered in Classes 35 and 43 at the USPTO that include
the term PARK. Bastion Phillips declaration, exhibit 2, Opposer’s response to
Applicant’s request for admission no. 43, 47 TTABVUE 20. Applicant also points out
that Opposer has not provided any evidence of fame of its marks, which Opposer does
not dispute.
Applicant submitted twenty-six third-party registrations that incorporate the
term PARK for hotel, lodging, and related hotel services and many more for various
investment and real estate services including: investment, investment advisory,
investment management, real estate management, real estate investment and real
estate development.23 Applicant contends that “the terms PARK and PARK HOTEL
have a certain connotation of luxury and affluence in the eyes of consumers [that] is
undoubtedly an important factor contributing to their ubiquitous use,” referencing
confidential witness testimony. Applicant’s brief, 67 TTABVUE 25-26, referencing
the Dell’Orto declaration, ¶ 7, confidential version, 27 TTABVUE.
This third-party registration evidence lends support to Applicant’s position that
the term PARK is a commonly registered component for hotel, lodging and related
hotel services and for the aforementioned investment and real estate services and is
conceptually weak. However, many of the registered marks include additional terms

23 Opposer criticizes this evidence because Applicant submitted photocopies of the
registration certificates and argues that there is no evidence that the registrations are
“currently live or dead.” Opposer’s brief, 66 TTABVUE 26. However, it is not necessary that
the copies of the third-party registrations submitted with a notice of reliance be current
status and title copies prepared by the Office. A plain copy (or legible photocopy) of the
registration itself is all that is required. Interbank Card Assn. v. U.S. Nat’l Bank of Oregon,
197 USPQ 123, 124 n.6 (TTAB 1977) (“Third-party registrations introduced as evidence on
the issue of likelihood of confusion may be plain copies or legible photoprints thereof.”).
Opposition No. 91233165
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or elements combined with PARK to distinguish them. Only seven of the third-party
registrations for hotel services24 contain the shared/combined phrase PARK HOTEL
without an intervening term. But these registrations also contain a term (often
apparently geographic) that precedes the combined term PARK HOTEL so as to
distinguish these marks from Opposer’s and Applicant’s marks (i.e., Gramercy Park
Hotel, Marins Park Hotel, Royal Park Hotel, Stanford Park Hotel, Lafayette Park
Hotel & Spa, Westpark Hotel, and Bryant Park Hotel).
The third-party registration evidence submitted by Applicant clearly
demonstrates that the term PARK is conceptually weak when used in connection with
services similar to Opposer’s and Applicant’s services. While there are only seven
registrations which encompass Opposer’s PARK HOTEL mark in its entirety, this
evidence does show that the combined term is somewhat suggestive as used in
connection with hotel services. We accord Opposer’s PARK HOTEL marks the normal
scope of protection to which suggestive marks are entitled.
Applicant also argues that the shared element of both parties’ marks, PARK
HOTEL, as well as the separate term PARK is weak and diluted in the marketplace.
In support of this assertion, Applicant provided evidence of third-party use of
marks containing PARK and PARK HOTEL in connection with hotel services to show
the commercial weakness of these terms.25 Applicant’s second NOR, 38 TTABVUE.

24 None of the third-party registrations for investment or real estate services include the
combined term PARK HOTEL.

25 Applicant provided evidence of third-party use of PARK hotel formative marks; six of the
exhibits are news articles, showing unsolicited third-party use, referencing the name of the
hotel as part of a larger story.
Opposition No. 91233165
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Applicant’s witness Mr. Dell’Orto testified that “[b]ased on [] my experience working
at Hilton, I understand that there are numerous ‘PARK’ and ‘HOTEL’ formative
marks in use in the United States by a multitude of different entities” for services
similar or identical to the parties’ services. Dell’Orto declaration, ¶ 24, 53 TTABVUE
10. He believes that “U.S. consumers are accustomed to distinguishing between
various entities with the terms ‘PARK’ and ‘HOTEL’ in their names, even those that
offer the same or similar services.” Id.
As stated above, evidence of use of similar marks by third parties for the same or
similar goods or services is relevant to a mark’s commercial strength or weakness. In
re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017); Juice
Generation, 115 USPQ2d at 1674. If a mark, or an element of a mark, is used
extensively in commerce by a number of third parties, the commercial strength of a
mark can be undermined, as the consuming public may have become familiar with a
multiplicity of the same or similar marks, and can distinguish them based on minor
differences. Juice Generation, 115 USPQ2d at 1674 (citation omitted ); Jack Wolfskin
116 USPQ2d at 1136. “The weaker [a registrant’s] mark, the closer an applicant’s
mark can come without causing a likelihood of confusion and thereby invading what
amounts to its comparatively narrower range of protection.” Juice Generation, 115
USPQ2d 1674.
Applicant’s evidence shows 28 hotels use PARK in the hotel name, and of those,
nineteen incorporate the exact phrase PARK HOTEL, without an intervening term.
Most of these uses include additional terms preceding the term PARK HOTEL to
Opposition No. 91233165
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distinguish them from Opposer’s and Applicant’s marks (i.e., Sheraton Park Hotel at
the Anaheim Resort, Park Hotel Hot Springs, The Buena Park Hotel & Suites,
Lafayette Park Hotel & Spa, Wyndham Hamilton Park Hotel and Conference Center,
The Bryant Park Hotel, Elliot Park Hotel, Gramercy Park Hotel, Independence Park
Hotel, Phoenix Park Hotel, Prytania Park Hotel, Stanford Park Hotel, Mayflower
Park Hotel, Yellowstone Park Hotel, The Henley Park Hotel, Haywood Park Hotel &
Atrium, San Juan Park Hotel, The Parc Hotel, Le Parc Suite Hotel). In some of these
uses, the terms modifying PARK are clearly referencing a specific geographic location
e.g., Bryant Park, Gramercy Park, Buena Park, Yellowstone Park, and Independence
Park.
Applicant’s evidence of third-party use demonstrates a weakening of Opposer’s
PARK HOTEL marks. Although this evidence does lend support to Applicant’s
assertion that the combination PARK HOTEL is commercially weak, the marks here
are much more similar to one another than all but one of the third-party uses (The
Parc Hotel). We find that Opposer’s PARK HOTEL marks are weak, but the evidence
does not show that its marks are entitled to such a narrow scope of protection as to
permit registration of a highly similar mark for related services. Top Tobacco LP v.
North Atlantic Operating Co., 101 USPQ2d 1163, 1173 (TTAB 2011). See also King
Candy Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 109 (CCPA
1974) (“The likelihood of confusion is to be avoided, as much between ‘weak’ marks
as between ‘strong’ marks, or as between a ‘weak’ and a ‘strong’ mark.”).
Opposition No. 91233165
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We find the fifth DuPont factor neutral, and the sixth DuPont factor weighs
slightly in favor of Applicant’s contention that confusion is unlikely.
B. Similarity or Dissimilarity of the Marks
We compare Applicant’s mark PARK HOTELS & RESORTS to Opposer’s common
law marks PARK HOTEL and P PARK HOTEL and design for similarities and
dissimilarities in appearance, sound, connotation and commercial impression. See
Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The test, under the first DuPont factor,
is not whether the marks can be distinguished when subjected to a side-by-side
comparison, but rather, whether the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the source of the goods or services
offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph
Learning, LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quoting
Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1905 (TTAB
2007)). Although the marks at issue must be considered in their entireties, it is well-
settled that one feature of a mark may be more significant than another, and it is not
improper to give more weight to a dominant feature in determining the overall
commercial impression created by the mark. See In re Chatam Int’l Inc., 380 F.3d
1340, 71 USPQ2d 1944, 1946-47 (Fed. Cir. 2004); In re Nat’l Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
While Opposer argues that the parties’ respective marks are essentially identical
in sound, appearance and connotation, Applicant argues that the relatively minor
Opposition No. 91233165
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differences between the parties’ marks are sufficient to distinguish them in the eyes
of consumers.
Opposer’s common law rights in its PARK HOTEL marks are for the marks as
actually used, which generally have a slight stylization, and/or a design element.
Applicant’s mark PARK HOTELS & RESORTS is in standard characters, and
therefore may be used in the same stylization as Opposer’s marks. Citigroup Inc. v.
Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011).
With regard to Opposer’s common law P PARK HOTEL and design mark, the
dominant feature is the term PARK HOTEL, as it is settled that the literal portions
are generally the dominant and most significant features of marks because
consumers will call for the goods or services in the marketplace by that portion. See
CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed. Cir. 1983); In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987). Further, the term PARK is
dominant because it is the first word of the literal portion and HOTEL is generic for
Opposer’s hotel booking and reservation services. See Palm Bay Imps., 73 USPQ2d
at 1692 (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because
“veuve” is the first word in the mark and the first word to appear on the label).
The wreath border design in the mark is used like a carrier or frame for the letter
“P” and does not create a distinctive commercial impression separate from the “P.” 26
See E.J. Brach & Sons, 256 F.2d 325, 118 USPQ 308 (CCPA 1958) (decorative panel

26 Opposer’s application Serial No. 87291829 identifies the design containing the letter “P” as
a “wreath design.” First Hung declaration, exhibit 1, 23 TTABVUE 12; Applicant’s third
NOR, exhibit 131, 37 TTABVUE 187.
Opposition No. 91233165
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with “frills and curves” which serves as a background for a registered mark was not
inherently distinctive on its own). The letter “P” would be seen and understood by
customers as reinforcing the word PARK. The addition of the letter “P” and the design
element in Opposer’s composite mark thus does not add significantly to the overall
commercial impression of the mark. This is especially true here where the design
feature with the letter “P” emphasizes and reinforces the dominant literal portion,
PARK. See UMG Recordings, Inc. v. Mattel, Inc., 100 USPQ2d 1868, 1887 (TTAB
2011) (“The ‘M’ in the first design mark above merely reinforces the first letter in
MOTOWN, and the font and square border are insignificant.”)
Likewise, for Opposer’s PARK HOTEL mark, PARK is the dominant portion
because this term is the first word, and HOTEL is generic of Opposer’s hotel booking
and reservation services. As to Applicant’s mark, the dominant feature of PARK
HOTELS & RESORTS is the lead word PARK; the terms HOTELS & RESORTS are
descriptive, if not generic, of a key feature of Applicant’s services and have been
disclaimed.27
Applicant’s PARK HOTELS & RESORTS mark incorporates Opposer’s common
law PARK HOTEL mark in its entirety and incorporates the dominant literal portion
of Opposer’s common law composite mark P PARK HOTEL and design. The use of
the plural HOTELS by Applicant in its mark is insigificant. Wilson v. Delaunay, 245
F.2d 877, 114 USPQ 339, 341 (CCPA 1957) (there is no material difference, in a

27 The ampersand does not have trademark significance because it simply functions as a
connector of the terms HOTELS & RESORTS.
Opposition No. 91233165
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trademark sense, between singular and plural forms of a word). The addition of the
merely descriptive, if not generic, term “& RESORTS,” would be seen by purchasers
as merely indicating that Applicant’s services relate to hotel properties that provide
recreation, entertainment, and accommodation. This addition does not distinguish
Applicant’s mark from either of Opposer’s common law PARK HOTEL marks because
“& RESORTS” is a non-distinctive term that has little or no source-indicating
significance. In general, likelihood of confusion is not necessarily avoided between
two otherwise confusingly similar marks merely by adding a term that is descriptive
or generic of the services. Cf. In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257,
1260 (Fed. Cir. 2010) (“… the presence of an additional term in the mark does not
necessarily eliminate the likelihood of confusion if some terms are identical”).
Applicant’s mark is similar in sound, appearance, connotation, and commercial
impression to both of Opposer’s common law PARK HOTEL marks to the extent they
all contain the term PARK HOTEL(S). Likelihood of confusion is often found where
the entirety of one mark is incorporated within another. See e.g., In re Denisi, 225
USPQ 624, 626 (TTAB 1985) (PERRY’S PIZZA for restaurant services specializing in
pizza and PERRY’S for restaurant and bar services); Johnson Publ’g Co. v. Int’l Dev.
Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for
hairdressing and conditioner).
While we have not overlooked the design element in one of Opposer’s common law
marks or the additional disclaimed term “& RESORTS” in Applicant’s mark, we
conclude that when considered in their entireties, Applicant’s mark and Opposer’s
Opposition No. 91233165
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common law PARK HOTEL marks engender very similar overall impressions. This
DuPont factor favors a finding of likelihood of confusion.
C. Similarity or Dissimilarity of the Services
We next consider the relatedness of the parties’ services. The parties’ respective
services need not be identical or even competitive to find that they are related for
purposes of our likelihood of confusion analysis, but need only be “related in some
manner and/or if the circumstances surrounding their marketing [be] such that they
could give rise to the mistaken belief that [the services] emanate from the same
source.” See Coach Servs. v. Triumph Learning LLC, 101 USPQ2d at 1722 (quoting
7-Eleven Inc. v. Wechsler, 83 USPQ2d at 1724).
We base our evaluation on the services as they are identified in Applicant’s
application and those services Opposer has established are in actual use in
association with its PARK HOTEL marks. Here, it has been established that Opposer
offers customers the ability to directly book or reserve hotel rooms that are operated
by Opposer and offers booking and reservation services to travel agents via contract,
offering room allotments at preferential rates in connection with Opposer’s hotels.
Applicant’s services are identified in the application as “Investment services,
namely, asset acquisition, consultation, development and management services; Real
estate investment trust services.” Applicant defines a real estate investment trust
(“REIT”) as “a company that owns, operates, or finances income-producing real
estate.” Weissman declaration, ¶ 5, 46 TTABVUE 5; Dell’Orto declaration, ¶ 10, 53
TTABVUE 5. “REITs operate similarly to mutual funds, in that they allow investors
Opposition No. 91233165
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to acquire ownership in real estate portfolios that receive passive income from
commercial properties such as apartment complexes, hospitals, offices, office
buildings, timber land, warehouses, hotels, and shopping malls.” Dell’Orto
declaration, ¶ 10, 53 TTABVUE 5.
Applicant is the “second largest publicly-traded lodging REIT in the United
States.” Dell’Orto declaration, ¶ 5, 53 TTABVUE 5. Shares of Applicant’s stock are
publicly traded on the New York Stock Exchange. Weissman declaration, ¶ 8, 46
TTABVUE 4; Dell’Orto declaration, ¶¶ 9, 12, 53 TTABVUE 4-6.
“Hotel REITs are not merely holding companies” but “actively manage hotel
properties … to provide profit to its investors.” Second Hung declaration, ¶ 4, 63
TTABVUE 4. To qualify as a REIT, the REIT “must invest at least 75% of its total
assets in real estate, cash or U.S treasuries [and] must receive a minimum of 75% of
its gross income from rents from real property, interest on mortgages financing real
property, or from sales of real estate.” Weissman declaration, ¶ 6, 46 TTABVUE 3-4.
Applicant’s testimony indicates that its investment services, namely asset
acquisition, consultation, development and management are offered in connection
with its real estate investment trust services. Applicant “focuses on the ownership,
acquisition, and divesture of hotel assets. …[and] owns a diverse portfolio of hotels
and resorts with significant underlying real estate value, [primarily] focused on U.S.
assets,” which total 54 hotel properties as of November 26, 2018.28 Weissman

28 “Applicant’s REIT owns three hotels in Europe and one in South America, but does not own
any hotels located in Asia. Dell’Orto declaration, ¶¶ 11, 20, 53 TTABVUE 5, 9 and exhibit 9,
59 TTABVUE 255-258; Weissman declaration, ¶ 11, 46 TTABVUE 5.
Opposition No. 91233165
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declaration, ¶¶ 10, 11, 19, 46 TTABVUE 4-5, 7-8; Weissman declaration, exhibit 2,
46 TTABVUE 14-146 and exhibit 5, 46 TTABVUE 161-164; Dell’Orto declaration, ¶¶
11, 20, 53 TTABVUE 5, 9, and exhibit 9, 59 TTABVUE 255-258.
Most of Applicant’s hotels are managed by a third-party hotel company but
Applicant itself manages four hotel properties operated under a franchise agreement:
Hilton Garden Inn LAX/El Segundo in Los Angeles, California; Hampton Inn &
Suites Memphis-Shady Grove, Memphis, Tennessee; Hilton Suites Chicago/Oak
Brook, Chicago, Illinois; and Hilton Garden Inn Chicago/Oak Brook in Chicago,
Illinois. Dell’Orto declaration, exhibit 1, 54 TTABVUE 79, 82; Weissman declaration,
exhibit 2, 46 TTABVUE 18.29 Even with its third-party management agreements,
Applicant maintains control over some aspects of hotel operations, including approval
rights to enter into long-term and high value contracts, operating budget approval,
certain capital expenditure approvals, and the right to hire certain management
personnel.30 Weissman declaration, exhibit 1, 54 TTABVUE 22. In connection with

29 Applicant submitted SEC Form-10Ks as exhibits to the Weissman and Dell’Orto
declarations. We consider the statements in the Form-10Ks as admissions of Applicant,
excluded from the hearsay rule under Fed. R. Evid. 801(d)(2). Raccioppi v. Apogee Inc., 47
USPQ2d 1368, 1372 (TTAB 1998), (abrogated in part on other grounds by Safer, 94 USPQ2d
at 1031). We do not rely on Applicant’s unverified interrogatory response no. 11, submitted
by Opposer under notice of reliance, fifth NOR, 62 TTABVUE. Although signed by Applicant’s
counsel, the answer was unaccompanied by a verification attesting to its accuracy. See n.17.
30 Applicant submits that its “provision of ‘management services’ to these four hotels is a
purely internal service offering within Applicant and its wholly-owned subsidiaries” [and] …
“no third party or consumer is likely to be aware of or ever encounter Applicant’s Mark in
connection with such internal offering of ‘management services.’” Applicant’s brief, 67
TTABVUE 38, 39. These four hotels are franchised under the Hilton brand names. Id. at 38;
see Weissman declaration, exhibit 2, 46 TTABVUE 22, 23; Dell’Orto declaration, exhibit 1,
53 TTABVUE 260, 261 (We operate the Select Hotels [the four properties managed by
Applicant] pursuant to franchise agreements with Hilton”; “[p]ursuant to the franchise
agreements, we were granted a limited, non-exclusive license to use our franchisor’s brand
Opposition No. 91233165
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the disclosure of risks to potential stock purchasers in its Form 10-K, Applicant
identifies its principal competitors as “hotel operating companies, ownership
companies (including other lodging REITs) and national and international hotel
brands.”31 Dell’Orto declaration, 54 TTABVUE 89; Weissman declaration, exhibit 2,
46 TTABVUE 30. Applicant considers its competitors to be other investment vehicles.
Dell’Orto declaration, ¶ 23; 53 TTABVUE 10; confidential version, 27 TTABVUE;
Weissman declaration, ¶ 22, confidential version, 26 TTABVUE. Its witnesses
testified that it does not consider Opposer, “or other hospitality and business
management companies, to be its competitors.” Dell’Orto declaration, ¶ 23, 53
TTABVUE 10; confidential version, 27 TTABVUE; Weissman declaration, ¶ 22, 46
TTABVUE 8; confidential version, 26 TTABVUE.
In connection with this DuPont factor, Opposer submitted six third-party
registrations to show that third parties have adopted and registered the same marks
for both real estate, financial and investment services and reservation and booking
services.32 Opposer’s first NOR, 22 TTABVUE. In a likelihood of confusion case, third-
party registrations can be used to suggest that the goods or services are related

names, marks and system in the operation of the Select Hotels.”). Opposer has not put any
evidence or testimony into the record that rebuts this testimony or Applicant’s Form 10-K
admissions.
31 Applicant’s discussion of competitors in this context is a disclosure required under Item 1A
“Risk Factors” of the Form 10-K and identifies potential business risks. See Weissman
declaration, exhibit 2, 46 TTABVUE 33. The purpose of the disclosure is to provide an
investor in a stock a greater ability to assess the company’s exposure to potential business
risks and potential loss of value in the stock. Id.
32 Applicant’s investment services are broadly identified to encompass financial investment
services and real estate investment services. One of the registrations covers “investment
services, namely, asset acquisition, consultation, development and management services.”
Opposition No. 91233165
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because the same party has registered a common mark for the goods or services at
issue. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993).
However, we do not find these third-party registrations particularly probative. Of
the six registrations, four identify reservation services unrelated to hotel reservation
services (e.g., tour reservations, cruise reservations, air transportation reservations
and travel reservations). Thus, these registrations have limited probative value
because they are for services different than what Opposer has established in
connection with its common law use.
Although two of the registrations cover hotel reservation services, those
reservations services are “for others.” Opposer has not established that it is offering
booking and reservations services for hotel properties operated by other hotel
companies. Instead, Opposer offers hotel booking and reservation services to travel
agents in the nature of contracted preferential room rates for booking at its hotels as
well as direct booking and reservation of its own hotel properties to consumers and
travel agents. Therefore, we do not find these two registrations probative of the
relatedness of Opposer’s and Applicant’s services. But even if we had considered
them, two third-party registrations are insufficient in number to establish that there
is an overlap between Opposer’s and Applicant’s services. See e.g., In re Donnay
International, Societe Anonyme, 31 USPQ2d 1953 (TTAB 1994) (in view of differences
in goods, two third-party registrations not persuasive of relatedness).
Opposer also submitted third-party registrations “to show that third parties have
commonly adopted and registered marks for real estate investment trust services and
Opposition No. 91233165
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hotel services.” Opposer’s third NOR, 60 TTABVUE 2. Opposer submitted two
registration pairs (Starwood; MGM and MGM Growth Properties) and one
registration and application pair to make this showing. We consider only the two
registration pairs, because a pending application is only evidence that the application
for the mark has been filed. See n.22.
Although it is common knowledge that hotel services and hotel reservation and
booking services are related, Opposer is not offering hotel services in the United
States, and hotel services are not the same as or similar to reservation and booking
services. Additionally, the MGM pair is not for the same mark. Therefore, we find
these third-party registrations are of limited probative value as to the relatedness of
Applicant’s real estate investment services and Opposer’s common law hotel booking
and reservation services. But even if we had considered these registration pairs, two
third-party registration pairs are an insufficient number to establish that there is an
overlap between Applicant’s services and hotel services. See e.g., In re Donnay
International, Societe Anonyme, 31 USPQ2d at 1953 (in view of differences in goods,
two third-party registrations not persuasive of relatedness).
Applicant submitted evidence of uses of marks in connection with hotel services
and financial services to “demonstrate that the same, similar, or related services to
those covered by the asserted and opposed applications are often offered under
similar marks by separate, unrelated entities.”33 Applicant’s second NOR, 38

33 Applicant submitted 20 uses of marks for hotel services and 35 corresponding uses of
similar marks for various financial services.
Opposition No. 91233165
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TTABVUE 14. Cf. Helene Curtis Industries v. Suave Shoe Corp., 13 USPQ2d 1618,
1624 (TTAB 1989) (“In connection with its related goods arguments, plaintiff has
made of record numerous third-party registrations and exhibits to show that it is
common in the trade for the same mark to appear both on personal care products and
wearing apparel emanating from the same source. Defendant, on the other hand, has
introduced registrations and exhibits to show registration and use of the same or
similar marks on these same types of products, but emanating from different
sources.”); In re G.B.I. Tile and Stone Inc., 92 USPQ2d 1366, 1369-70 (TTAB 2009)
(To show that goods or services emanate from different sources, sets of third-party
registrations may be used to show that the USPTO has registered the same or similar
marks to different entities for the goods or services at issue.).
Some of these exhibits do not clearly identify the nature of the financial services
so we have disregarded them. Also, many of the uses have little probative value as
they do not identify the same or similar services as Applicant’s (e.g., among others,
financial planning, wealth management, investment banking, venture capital,
capital funding for companies, private equity investing, mortgage lending, financial
coaching, retirement savings plan administration and compliance monitoring).34 Of
the remaining uses, there are nine uses of marks for hotels services with ten uses of
similar marks in connection with investment management or asset management or
asset acquisition type services: (Crowne Plaza Hotel & Resorts (hotel services) and
Crowne Capital Group (direct investment real estate market); Four Seasons Hotels

34 Opposer submits that only two of the uses relate to real estate investment trusts.
Opposition No. 91233165
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& Resorts (hotel services) and Four Seasons Investment Management (investment
management); Gaylord Hotels (hotel services) and Gaylord Wealth Management
(personal asset management); Hampton by Hilton (hotel services) and Hampton
Partners (private equity investment focusing on real estate ownership and
management); Hawthorne Suites by Wyndham (hotel services) and Hawthorne
Financial (asset management); Hyatt (hotel services) and Hyatt Capital Management
(investment management); The Peninsula Hotels (hotel services) and Peninsula
Financial Group (investment management) and PLC Peninsula Land and Capital
(private equity group making real estate acquisitions and dispositions of office
buildings); Renaissance Hotel (hotel services) and Renaissance Wealth Management
(investment management); Waldorf Astoria Hotel & Resorts (hotel services) and
Waldorf Capital Management LLC (complete development and property
management services; institutional-quality asset management).35
These examples are of limited probative value because, in most cases, the marks
share a common word, with other words, that creates different connotations or
commercial impressions, and the uses are for hotel services and not specifically for
hotel booking and reservations services for which Opposer has established use. At
most, the evidence tends to show the public may be accustomed to businesses in the
hotel services and financial services fields sharing common terms in their marks.

35 Opposer argues in its brief that two uses of STARWOOD, not listed here, support its
position as to relatedness. However, we do not find these uses probative for either party’s
position because the financial service offered under STARWOOD is not the same or similar
to Applicant’s identified services.
Opposition No. 91233165
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Opposer points to Applicant’s Form 10-K Annual Report and argues that
Applicant acknowledges that international hotel brands are Applicant’s competitors.
In response to this argument, Applicant submits that its competitors are other
investment vehicles. Applicant argues that “this broad statement [in the Form 10-K]
is simply an acknowledgement that each of Applicant’s hotel properties … compete
with other hotels and with national and international hotel brands and hotel
operating companies … for business at their hotels. However, Applicant does not
compete with hotel brands or hotel operating companies for potential consumers of
Applicant’s [REIT] Services.” 67 TTABVUE 37.
Applicant’s service is an alternative investment vehicle offered on the New York
Stock exchange and its “services” are purchased by buying shares of publicly traded
stock. Although Applicant’s REIT focuses on hotel properties, we are persuaded that
Applicant’s competitors are other investment vehicles, including other hotel REITS,
rather than hotel companies directly.
Opposer asserts that the parties’ services are related because Applicant, like
Opposer, owns and manages hotel properties as stated in its Form 10-K. See Dell’Orto
declaration, exhibit 1, 54 TTABVUE 35, 270; Weissman declaration, exhibit 2, 46
TTABVUE 18, 30. Opposer submits that “the investment management services and
real estate investment trust services listed in the Opposed Application are simply
more narrowly defined services within the umbrella of hotel ownership and
management” and that “there is no question that the services Opposer currently
offers in the United States - hotel booking and reservation services - and Applicant’s
Opposition No. 91233165
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real estate investment trust services are highly related.” Opposer’s brief, 66
TTABVUE 20.
Opposer’s argument is unsupported. The record is clear that Opposer does not own
or manage any hotels in the United States. Opposer points to its ownership of a
portfolio of foreign hotels located in eight countries, and its filed applications in
Classes 35 and 43 as evidencing its intent to use its mark on hotel services in the
United States and its interest in opening hotels in the United States. Opposer’s brief,
66 TTABVUE 17. However, the filed applications are not evidence of use. See n.22.
Even assuming that hotel ownership and hotel management are a part of Applicant’s
investment and REIT services, the only services that Opposer has established in the
record are its common law hotel reservation and booking services. When Opposer is
relying on its use-based hotel reservation and booking services, it is not enough to
attempt to establish relatedness of Applicant’s services with hotel services.
The record in this case does not demonstrate that it is common for a single entity
to offer hotel reservation and booking services and “investment services, namely,
asset acquisition, consultation, development and management services; real estate
investment trust” services under the same mark. Opposer’s unsupported arguments
to the contrary are no substitute for evidence. Enzo Biochem, Inc. v. Gen-Probe, Inc.,
424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005). We find that Opposer has not
established that hotel reservation and booking services and Applicant’s investment
and real estate investment trust services are related.
Opposition No. 91233165
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Opposer argues, in the event we find the parties’ services unrelated, that the
services for which Applicant seeks registration are within its zone of expansion.
Opposer’s brief, 66 TTABVUE 20-23.
Under the doctrine of “natural expansion,” the first user of a mark in connection
with particular goods or services possesses superior rights in the mark against
subsequent users for the same or similar marks for the same or similar goods or
services, as well as for any goods or services which consumers might reasonably
expect to emanate from the first user in the normal expansion of its business. Mason
Engineering v. Mateson Chemical, 225 USPQ 956, 962 (TTAB 1985).36 In this case,
the doctrine of “natural expansion” would apply if the evidence shows that consumers
would generally expect that hotel reservation and booking services and Applicant’s
identified investment services and real estate investment trust services emanate
from the same source.
The factors considered in Mason are:
1. Whether the second area of business (that is, the subsequent
user’s area of business into which the first user has or
potentially may expand) is a distinct departure from the first
area of business (of the prior user), thereby requiring a new
technology or know-how, or whether it is merely an
extension of the technology involved in the first area of
business;

2. The nature and purpose of the goods or services in each area;
3. Whether the channels of trade and classes of customers for
the two areas of business are the same, so that the goodwill

36 Typically, in an inter partes proceeding, the doctrine of natural expansion is used in
connection with priority rather than the second DuPont factor. Orange Bang, Inc. v. Olé
Mexican Foods, Inc., 116 USPQ2d 1102, 1119 (TTAB 2015).
Opposition No. 91233165
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established by the prior user in its first area of business
would carry over into the second area; and

4. Whether other companies have expanded from one area to
the other. 225 USPQ at 962.

Opposer relies on the third-party registrations it submitted for factors one and
three. Opposer’s first NOR, 22 TTABVUE; Opposer’s third NOR, 60 TTABVUE. For
factor two, Opposer references Applicant’s annual report, Form 10-K that discusses
challenges as to the growth of Internet reservation channels that affect profitability.
Weissman declaration, exhibit 2, 46 TTABVUE 43. As to factor four, Opposer relies
on its status as a hotel company and Applicant’s expansion as a spin-off from its
parent hotel company, Hilton. Weissman declaration, exhibit 2, 46 TTABVUE 103
(“On January 3, 2017, Hilton Worldwide Holdings Inc (“Hilton” or “Parent”)
completed the spin-off of a portfolio of hotels and resorts that resulted in the
establishment of Park Hotels & Resorts Inc. as an independent, publicly traded
company.”).
As stated, we find neither the third-party registrations pairs submitted by
Opposer covering real estate investment trust services and hotel services, nor the
third-party registrations covering reservation and booking services and real estate
investment, real estate management, and real estate acquisition services probative
of the relatedness of the parties’ services, and we find them no more probative for
purposes of this analysis. But even if we considered two of the third-party
registrations that covered hotel reservations services “for others” as the same or
similar to Opposer’s services, these registrations are too few in number to be
Opposition No. 91233165
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persuasive of Opposer’s argument. We also find, as discussed below, that the trade
channels for Opposer’s hotel reservation and booking services and Applicant’s
investment and real estate investment trust services do not overlap.
As to the second factor, Opposer submits that “reserving rooms in a hotel ensures
hotel profits which benefits investors/owners of hotel properties.” Opposer’s brief, 66
TTABVUE 21. While profitability of hotel properties is the ultimate goal for both
types of services (hotel reservation and booking services and hotel REITs), this does
not establish that the nature and purpose of the services are the same. The purpose
of hotel reservation and booking services is to assist customers or travel agents in
reserving hotel rooms, while the purpose of a REIT is an investment vehicle, similar
to a mutual fund, that allows investors to invest in large-scale income-producing
commercial real estate by purchasing shares rather than purchasing an interest in
commerical real estate directly.
As to the fourth factor, Opposer asserts that its status as a hotel company is
relevant because Opposer has hotels in eight countries and could create a hotel real
estate investment trust into which Opposer transfers its hotel portfolio. Although the
evidence that Applicant’s REIT is a spin-off of Applicant’s portfolio of hotels is some
evidence that companies with a portfolio of hotels may spin-off the properties into a
hotel REIT, it does not provide support that a hotel REIT would be a natural
expansion of Opposer’s current United States services, which are hotel reservation
and booking services for its foreign hotels located in the Asia Pacific. Opposer also
points to its filed trademark applications for services in Classes 35 and 43 as evidence
Opposition No. 91233165
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of its expansion. Although this may evidence Opposer’s intended expansion of
services to the United States market, this evidence does not establish that purchasers
generally expect Opposer’s hotel booking and reservation services and Applicant’s
REIT services to emanate from the same source. Lastly, Opposer has not introduced
any evidence or testimony showing that there is any other reason why potential
purchasers would associate Applicant’s REIT with Opposer’s hotel booking and
reservation services.
Accordingly, we are not persuaded that the evidence of record supports Opposer’s
contention that Applicant’s REIT and investment services are within its natural zone
of expansion. The second DuPont factor thus weighs heavily against a finding that
confusion is likely.
D. Similarity or Dissimilarity of the Trade Channels and Classes of
Purchasers
We next consider the third DuPont factor involving the established and likely-to-
continue channels of trade and classes of purchasers. DuPont, 177 USPQ at 567.
Because Opposer relies on its common-law rights, Opposer can claim only those
channels of trade and classes of consumers which it has established on the record.
Bell’s Brewery, Inc. v. Innovation Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017) (no
presumptions attach to unregistered common law mark).
Opposer must prove that its hotel reservation and booking services are sold in the
same or similar type of distribution channels as encompassed by Applicant’s
description of services, namely, any of the normal trade channels for “[i]nvestment
services, namely, asset acquisition, consultation, development and management
Opposition No. 91233165
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services; Real estate investment trust services.” When there are no limitations or
restrictions in Applicant’s identification of services, the Board must presume that
Applicant’s services move in all channels of trade that would be normal for such
services, and that they would be purchased by all potential customers. See CBS Inc.
v. Morrow, 218 USPQ at 199; Hard Rock Cafe International (USA) Inc. v. Elsea, 56
USPQ2d 1504, 1512 (TTAB 2000) (noting that while opposer’s channels of trade were
limited to its common law uses, there was no restriction in applicant’s identification
on the channels of trade and therefore the goods were deemed to be sold in all
channels of trade appropriate for such goods).
Opposer’s customers are United States consumers that travel abroad to the Asia
Pacific for business or leisure as well as travel agents and travel planners, including
those planning group travel in the Asia Pacific and seeking high-end or luxury
accommodations. First Hung declaration, ¶¶ 3, 7, 12, 23 TTABVUE 3-4, exhibit 11
(confidential filing, 24 TTABVUE). See also Applicant’s unrebutted witness
testimony: Dell’Orto declaration, ¶ 18, 53 TTABVUE 9 (Opposer “operates upscale
hotels in Australia, China, Hong Kong, Indonesia, Japan, Malaysia, the Maldives,
Singapore, and South Korea, that appear to be geared toward business travelers and
others seeking luxury accommodations,” based on a review of Opposer’s website);
Weissman declaration, ¶ 17, 46 TTABVUE 9 (same).
As discussed in the priority section, Opposer’s hotel services are marketed on its
website, on Instagram and Facebook, at travel agent events, and through travel
agency marketing arrangements. Although there is no testimony on this point,
Opposition No. 91233165
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Applicant submitted evidence through a notice of reliance that shows on its face that
consumers may have been exposed to and are therefore aware of magazine
advertisements for Opposer’s hotel services in magazines such as Business Traveler
Asia Pacific, Forbes Asia, and TTG Asia.37 Applicant’s third NOR, exhibits 134 and
135, 37 TTABVUE 238-254. See Logicon, Inc. v. Logisticon, Inc., 205 USPQ 767, 768
n.5 (TTAB 1980) (“magazine articles … are hearsay in nature and thus are probative
not for the truth of the matters contained therein but rather only for what they show
on their face.”).
As to the trade channels for booking and reservation services, United States
customers can make reservations and book Opposer’s hotel rooms directly at
Opposer’s website, or through travel agents or travel planners. First Hung
declaration, ¶ 7, 23 TTABVUE 4; exhibit 11 (confidential 24 TTABVUE). United
States travel agents and group travel planners may book and reserve Opposer’s hotel
rooms through Opposer’s reservation hotline (telephone), email and facsimile. First
Hung declaration, exhibit 11 (confidential 24 TTABVUE); Applicant’s third NOR,
exhibit 136, 37 TTABVUE 255-256. See also the unrebutted testimony of Mr.
Weissman (Opposer’s customers can purchase “hospitality services directly through
PHM’s website or perhaps through a travel agent.”). Weissman declaration, ¶ 21, 46
TTABVUE 8. Opposer has not shown that any trade channels for its own hotel

37 These advertisements show on their face that they are directed to Opposer’s hotel services
generally and not directed to hotel reservation and booking services specifically.
Opposition No. 91233165
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reservation and booking services (website, email, telephone and facsimile) constitute
an ordinary trade channel for Applicant’s identified services.
Applicant’s testimony indicates that Applicant’s publicly traded lodging REIT
focuses on the ownership, acquisition, and divestiture of hotel assets and that the
REIT is SEC-registered and publicly traded on the New York Stock Exchange.
Dell’Orto declaration, ¶¶ 10, 11, 12, 46 TTABVUE 5-6; Weissman declaration, ¶¶ 5,
8, 10, 46 TTABVUE 3-4. Applicant advertises and promotes its services through its
website, located at http://www.pkhotelsandresorts.com, and through presentations to
investors, conferences for investors, and investor materials such as annual reports,
SEC filings, e-mail communications, press releases and news articles.38 Weissman
declaration, ¶ 15, 46 TTABVUE 6; Dell’Orto declaration, ¶ 15, 53 TTABVUE 6.
Applicant does not directly sell its services to consumers for a specific fee. Dell’Orto
declaration, ¶ 12, 53 TTABVUE 6; Weissman declaration, ¶ 8, 46 TTABVUE 4. The
sales of Applicant’s services are “accomplished by the purchase of shares, which
typically occurs over the New York Stock exchange” or by “buying shares in an equity
offering by PK to investors.” Dell’Orto declaration, ¶ 12, 53 TTABVUE 6; Weissman
declaration, ¶ 8, 46 TTABVUE 4. Applicant’s “investors often invest in PK’s stock …

38 Applicant submitted evidence of news stories about Applicant or its CEO in a regional
journal, trade publications and a university business school publication. Dell’Orto
declaration, exhibit 7, 59 TTABVUE 104-120, 238, and 247. The evidence submitted by
Applicant is probative to show that consumers may have been exposed to stories about
Applicant or its CEO and are aware of them. Opposer speculates in its brief that the parties
have overlapping advertising/marketing channels because both parties use magazines to
promote their services. However, this argument is unsupported as there is no testimony that
both Opposer and Applicant have advertised or been featured in the same publication or even
the same type of publication such that their advertising channels overlap.
Opposition No. 91233165
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without even consulting with or contacting” Applicant. Weissman declaration, ¶ 21,
46 TTABVUE 8; Dell’Orto declaration, ¶ 22, 53 TTABVUE 10. “Consumers cannot
book hotel accommodations on Applicant’s website and Applicant does not appear as
a hotel option on travel websites such as Hotels.com, Travelocity, or Expedia.”39
Dell’Orto declaration, ¶ 21, 53 TTABVUE 9; Weissman declaration, ¶ 20, 46
TTABVUE 8.
As to Applicant’s customers, Applicant’s witnesses testified that its “customers are
REIT investors buying an investment in a hotel portfolio through the purchase of
PK’s stock.” Dell’Orto declaration, ¶ 19, 53 TTABVUE 9; Weissman declaration, ¶ 18,
46 TTABVUE 7 (PK’s “customers,” are investors in REITs). Applicant’s customers are
“generally not even individuals, but highly specialized and sophisticated financial
institutions seeking to invest in lodging real estate portfolios.” Weissman declaration,
¶¶ 12, 21, 46 TTABVUE 5, 8; Dell’Orto declaration, ¶ 14, 53 TTABVUE 6 (Applicant’s
customers “are primarily large, sophisticated, institutional investors”). Applicant
does acknowledge that “there are different types of investors that invest” in
Applicant’s REIT, including individuals.40 Weissman declaration, ¶¶ 12, 21, 46
TTABVUE 5, 8. See also Second Hung declaration, ¶ 5, 63 TTABVUE 3 (investors of
real estate investment trusts are not exclusively institutional investors; such
investments may be purchased and held by individual investors).

39 None of the hotels owned in Applicant’s REIT are branded under the PARK HOTELS &
RESORTS mark. Dell’Orto declaration, ¶ 20, 53 TTABVUE 9; Weissman declaration, ¶ 19,
46 TTABVUE 8.
40 Applicant’s witness testified confidentially that an extremely small percentage of its
investors are individuals. Weissman declaration, confidential version, 26 TTABVUE.
Opposition No. 91233165
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Opposer argues that the parties’ trade channels overlap. However, as indicated
from the testimony and evidence, Opposer’s hotel booking and reservation services
travel in a different trade channel than Applicant’s investment and REIT services
and this factor therefore favors Applicant. As to classes of purchasers, we find that
the parties’ purchasers may overlap as potential buyers of Applicant’s real estate
investment trust shares could be individuals, and those individuals could be the same
consumers who would reserve or book Opposer’s hotel rooms. However, “[t]here is
nothing in the record … to suggest that merely because the same consumer may
purchase these items, such consumer would consider the goods as likely to emanate
from the same source or have the same sponsorship.” Sports Authority Michigan Inc.
v. PC Authority Inc., 63 USPQ2d 1782, 1794 (TTAB 2002). Therefore, we find the
third DuPont factor weighs in Applicant’s favor.
E. Conditions of Sale
Applicant argues that consumers of Applicant’s stock are sophisticated purchasers
who exercise heightened care in their purchasing decisions which makes confusion
unlikely. Applicant’s witnesses testified that its purchasers are made up of “primarily
large, sophisticated, institutional investors that necessarily exercise a high degree of
care,” although they acknowledged that Applicant’s investors include individuals that
purchase Applicant’s stock. Weissman declaration, ¶ 12, 46 TTABVUE 5; Dell’Orto
declaration, ¶ 14, 53 TTABVUE 6. Mr. Weissman explains the process that
institutional investors employ in purchasing a REIT investment:
When institutional investors make investments, the stocks
they purchase are typically selected by portfolio managers
Opposition No. 91233165
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with at least ten years of experience with REIT investment.
These portfolio managers are typically extremely
knowledgeable about the various REIT sectors and
portfolio companies, including their operations, their
capital structure, their long-term debt terms, the
qualifications of their management teams, their dividend
history, their tax attributes, and the specific properties or
hotels they own. Weissman declaration, ¶ 13, 46
TTABVUE 6.
Although Applicant argues in its brief that an individual stock purchaser will
exercise a high degree of care, Applicant’s witnesses did not testify about the degree
of care of the individual investor.
When the relevant consumer includes both investment professionals (portfolio
managers) and the general public, the standard of care for purchasing the services is
that of the least sophisticated purchaser. See Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1163 (Fed. Cir. 2014) (precedent
requires consumer care for likelihood-of-confusion decision to be based “on the least
sophisticated potential purchasers”). We do agree that even individual investors
would exercise some degree of care in purchasing Applicant’s stock. There is no
evidence relating to the decision-making process for consumers of Opposer’s hotel
booking and reservation services. However, we observe that the booking or
reservation of luxury accommodations in a foreign destination by a travel agent for
group travel or by the luxury or business traveler is not an inexpensive or casual
purchase (such as a bar of soap or bottle of shampoo, for example), and some degree
of care is exercised in the purchasing decision.
Opposition No. 91233165
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On balance, we find purchasers of the Opposer’s and Applicant’s services are likely
to be at least somewhat knowledgeable and careful when making their purchasing
decisions. We find the fourth DuPont factor weighs slightly in Applicant’s favor.
F. Actual Confusion
Applicant submits that the parties have coexisted since December 2016 without
any evidence of actual confusion. Applicant’s brief, 67 TTABVUE 50; Dell’Orto
declaration, ¶ 9, 53 TTABVUE 5. Applicant’s witness testified that “[s]ince its first
use, PK has continuously used the PARK HOTELS & RESORTS Mark in connection
with the promotion, advertising, marketing, offer for sale, and sale of PK’s Services
without any instances of actual confusion with Opposer, Opposer’s PARK HOTEL or
P PARK HOTEL marks or Opposer’s services.” Dell’Orto declaration, ¶ 9, 53
TTABVUE 5.
In response to this testimony, Opposer argues that the test is likelihood of
confusion, and “that the absence of actual confusion cannot outweigh the other factors
showing that confusion is likely.” Opposer’s brief, 66 TTABVUE 27.
While the absence of actual confusion may weigh against a finding of likelihood of
confusion, the absence of any reported instances of confusion is meaningful only if the
record indicates a reasonable opportunity for confusion to have occurred. Barbara’s
Bakery, Inc. v. Barbara Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007). Here, there
is nothing in the record upon which to make such a finding as there is no evidence to
show overlapping use in the same markets. We therefore find this DuPont factor
neutral.
Opposition No. 91233165
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Conclusion
We have carefully considered all arguments and evidence of record, including any
not specifically discussed herein. Each of the thirteen DuPont factors “may from case
to case play a dominant role.” DuPont, 177 USPQ at 567. We find the second and
third DuPont factors dispositive here. Despite the similarity of the parties’ marks, we
find that the services are different and that they move in established, likely-to-
continue channels of trade that are separate and distinct. On balance, we find that
Applicant’s PARK HOTELS & RESORTS mark is not likely to cause confusion with
Opposer’s common law PARK HOTEL and P PARK HOTEL and design marks.
Decision: Opposer has failed to carry its burden of proving its Section 2(d) ground
of opposition. The opposition is dismissed.