Riviera Operating Corp.

Trademark Trial and Appeal Board

Jan 12, 1999

No. 74646349 (T.T.A.B. Jan. 12, 1999)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JAN. 11,98
Hearing: Paper No. 15
April 15, 1998 PTH
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Riviera Operating Corporation
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Serial No. 74/646,349
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Glenn A. Gundersen of Dechert, Price & Rhoads for Riviera
Operating Corporation.
Charles L. Jenkins, Jr., Trademark Examining Attorney, Law
Office 105 (Thomas Howell, Managing Attorney).
_______
Before Hanak, Quinn and Hairston, Administrative Trademark
Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Riviera Operating
Corporation to register the mark RIVIERA for services which
were subsequently identified as “hotels; providing banquet,
convention, business meeting, and social function
facilities for special occasions.”1

1 Application Serial No. 74/646,349, filed March 13, 1995;
alleging dates of first use of April 20, 1955.
Ser No. 74/646,349
2
The Trademark Examining Attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when used in connection with
applicant’s services, so resembles the previously
registered mark set forth below for “restaurant services”2
as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Briefs have been filed and an oral hearing was held before
the Board.
As a preliminary matter, we note that applicant
maintains that the final refusal to register was premature.
In particular, applicant states that its original
recitation of services included restaurant services as well
as hotel services. In the first Office action, the
Examining Attorney refused registration under Section 2(d),
citing the above registered mark, and stating that “the
services of the parties are related, because they are both

2 Registration No. 1,051,534 issued October 26, 1976; renewed.
The word “CAFE” has been disclaimed apart from the mark as shown.
Ser No. 74/646,349
3
restaurant services.” There was no mention made of any
relationship between applicant’s hotel services and
registrant’s restaurant services. In response to the
refusal, applicant deleted “restaurant services” from the
recitation of services. According to applicant, it assumed
that the Examining Attorney would then withdraw the refusal
to register. Instead, in the second Office action, the
Examining Attorney again refused registration under Section
2(d) in view of the above registered mark, and stated that
“the services of the parties are related, because
restaurants may be located in hotels.” The refusal to
register was made final. It is applicant’s position that
the final refusal was premature because the Examining
Attorney made no mention, in the first Office action, of a
likelihood of confusion between the marks as used in
connection with hotel services and restaurant services.
However, inasmuch as the ground for refusal was the same in
the first and final Office actions, i.e., Section 2(d), we
cannot say that the refusal was premature. Moreover,
applicant was not precluded from arguing against the
Examining Attorney’s position because applicant did file a
request for reconsideration (which the Examining Attorney
considered) wherein it set forth its arguments.
Ser No. 74/646,349
4
Turning then to the refusal, it is essentially the
Examining Attorney’s position that there is a likelihood of
confusion because the respective marks are very similar and
the services are related. In support of the refusal, the
Examining Attorney made of record a number of third-party
registrations for marks which cover both hotel and
restaurant services. Also, the Examining Attorney made of
record excerpts from the NEXIS data base, which he
maintains show that hotel and restaurant services are
related.
Applicant, in urging reversal of the refusal to
register, argues that there is no per se rule that the use
of identical or substantially similar marks in connection
with hotel services and restaurant services is likely to
cause confusion. Applicant points to three examples where
identical or substantially similar marks have been
registered by different entities for hotel services on the
one hand and restaurant services, on the other.3 Also,
applicant argues that there is no likelihood of confusion

3 They are: (1) Registration No. 1,635,788 for the mark FOUR
SEASONS HOTELS-RESORTS and design for hotel and resort innkeeping
services and Registration No. 936,802 for the mark THE FOUR
SEASONS for restaurant services; (2) Registration No. 1,535,837
for the mark THE PEABODY and design for hotel services and
Registration No. 2,039,810 for PEABODY’S COFFEE CO. and design
for restaurant services specializing in coffees, teas and other
beverages; and (3) Registration No. 2,054,525 for the mark MIRAGE
Ser No. 74/646,349
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in this case because its mark and the cited mark have
coexisted for 27 years with no instances of actual
confusion.
Turning first to the marks, while they are similar, we
note that they are not identical. Although the word CAFE
in the registered mark has been disclaimed, it cannot be
ignored. Further, we note that RIVIERA and RIVIERA CAFE
are suggestive as used in connection with the parties’
respective services. We judicially notice that “riviera”
is defined in Webster’s New Collegiate Dictionary (1979)
as: “a coastal region frequented as a resort and usu.
marked by a mild climate.”
Turning to the services, admittedly they are related,
but they are not the same. While we recognize that
entities have registered a single mark for hotel and
restaurant services, there have been at least three
instances where identical or substantially similar marks
have been registered for hotel services, on the one hand,
and restaurant services, on the other. Further, it is
common knowledge that hotel restaurants generally do not
bear the name of the hotel itself. We note in this regard
the specimen brochure submitted by applicant which shows

for resort and hotel services and Registration No. 1,352,229 for
the mark MIRAGE for restaurant and bar services.
Ser No. 74/646,349
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that applicant’s hotel features four restaurants, namely
Risorante Italiano, Rik’ Shaw, Kristofer’s, and Kady’s.
Also, although not unprecedented, it is not a common
practice for restaurants to expand into the hotel business.
Finally, we cannot overlook the fact that these marks
have coexisted for over twenty-seven years with no apparent
instances of confusion. Although there is no consent to
register here, this case shares some similarities with In
re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071
(Fed. Cir. 1993). The Court there, in finding that the
applicant’s use of FOUR SEASONS BILTMORE for an oceanfront
resort was not likely to cause confusion with the
registered mark THE BILTMORE LOS ANGELES for a city hotel,
noted that while the services performed by the parties were
similar, they were not identical, and acknowledged that the
marks at issue had coexisted for some time.
Thus, notwithstanding any relatedness in the services
herein, we find that applicant’s use of the mark RIVIERA in
connection with hotels; providing banquet, convention,
business meeting, and social function facilities for
special occasions, is not likely to cause confusion with
the registered mark RIVIERA CAFÉ and design for restaurant
services.
Ser No. 74/646,349
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Decision: The refusal to register is reversed.
E. W. Hanak
T. J. Quinn
P. T. Hairston
Administrative Trademark
Judges, Trademark Trial and
Appeal Board