Russo Development, LLC

Trademark Trial and Appeal BoardMar 24, 2017

No. 86644110 (T.T.A.B. Mar. 24, 2017)

This Opinion is not a Precedent of the TTAB Mailed: March 24, 2017 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Russo Development, LLC _____ Serial No. 86644110 _____ Joseph Agostino of Greenberg Traurig, LLP, for Russo Development, LLC. Tracy Whittaker-Brown, Trademark Examining Attorney, Law Office 111, Robert L. Lorenzo, Managing Attorney. _____ Before Zervas, Kuhlke and Ritchie, Administrative Trademark Judges. Opinion by Zervas, Administrative Trademark Judge: Russo Development, LLC. (“Applicant”) seeks registration on the Principal Register of the mark VERMELLA AT UNION STATION in standard characters for “Real estate management of residential apartments and condominiums; real estate operations, namely, management of residential apartments and condominiums; leasing and rental of real estate; leasing and rental of residential apartments and condominiums” in International Class 36; and Serial No. 86644110 - 2 - “Real estate development; real estate development and construction of residential apartments and condominiums and hotel property” in International Class 37.1 The Examining Attorney refused registration of Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on (i) Registration No. 45952192 for the standard character mark UNION STATION HOTEL, and (ii) Registration No. 45995793 for both for “hotel services” in International Class 43. Both registrations issued to the same entity and Registrant disclaimed the term HOTEL in both registrations. After the Examining Attorney issued a Final Office Action, Applicant appealed the refusal to register. Both Applicant and the Examining Attorney filed briefs, and Applicant filed a reply brief. 1 Application Serial No. 86644110, filed May 28, 2015, pursuant to Trademark Act § 1(b), 15 U.S.C. § 1051(b), claiming a bona fide intent to use the mark in commerce. A translation statement in the record states that an English language translation of VERMELLA is red. The colors brown and white are claimed as a feature of the mark. Applicant claimed ownership of Registration Nos. 4365555 and 4365557 for the marks VERMELLA and VERMELLA and design for essentially the same services as the applied-for mark. 2 Registered September 2, 2014. 3 Registered September 9, 2014. A description of the mark in the record for Registration No. 4599579 provides, “The mark consists of the wording ‘UNION STATION HOTEL’ in the color brown with a tower clock between the words ‘UNION’ and ‘STATION’, and the word in the color white ‘HOTEL’ inside a brown banner directly beneath the clock tower.” Serial No. 86644110 - 3 - Preliminary Issue Applicant submitted for the first time various exhibits with its appeal brief. We do not give any consideration to this material. The record has been closed since the filing of the notice of appeal and the Examining Attorney has not discussed the new evidence or affirmatively treated it as being of record. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (“TBMP”) § 1207.03 (Jan. 2017). Likelihood of Confusion Our determination under Section 2(d) of the Trademark Act is based on an analysis of the probative facts in evidence that are relevant to the factors bearing on a likelihood of confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014). Serial No. 86644110 - 4 - Similarity of Services, Classes of Purchasers and Trade Channels We must make our determinations based on the services set forth in the cited registrations and in the application. See In re Dixie Rests. Inc., 41 USPQ2d at 1534. See also, Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). In order to be related, services do not have to overlap. It “has often been said that … services need not be identical or even competitive in order to support a finding of likelihood of confusion. Rather, it is enough that … services are related in some manner or that circumstances surrounding their marketing are such that they would be likely to be seen by the same persons under circumstances which could give rise, because of the marks used thereon, to a mistaken belief that they originate from or are in some way associated with the same producer or that there is an association between the producers of each parties’ … services.” In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650, 1661 (TTAB 2002). The Trademark Examining Attorney submitted approximately ten screenshots of third party websites, generally for hotels with private residences and “condo hotels.” See, e.g.: Serial No. 86644110 - 5 - Hyatt – Escala Lodge Condominiums for Sale “The lodge-style hotel includes three buildings with native mountain stonework and timber frame structure. The Hyatt Escala Lodge offers 85 spacious condominiums which can be divided into … residential style hotel suites. … Owners placing their units in the rental program … .”4 groveresort.com Offering “Hotel Management” and stating “Discover Orlando’s newest and most exciting resort style condo hotel less than 5 minutes from Walt Disney World. Fully furnished two and three bedroom units are on sale now.”5 Galefl.com/flexible-living/ “Owning at the Gale Residences & Boutique Hotel Fort Lauderdale Beach can be rewarding in many ways even when you are not in town to enjoy it. From taking part in the optional hotel rental program … ownership at the Gale just gives and gives.” Also, “Private Rental Program option for owners who wish to rent their units.6 Westin Hotels & Resorts “Westin Residences offer unique private ownership opportunities, ranging from lavishly appointed hotel residences to serene private residences.”7 Most of the webpages submitted by the Examining Attorney establish that a single entity provides hotel services and will lease, rent or manage residential apartments and condominiums under one trademark. The evidence therefore establishes a 4 September 14, 2015 Office Action, TSDR 8. 5 April 14, 2016 Office Action, TSDR 12. 6 April 14, 2016 Office Action, TSDR 4. 7 September 14, 2015 Office Action, TSDR 9. Serial No. 86644110 - 6 - relationship between Applicant’s “management of residential apartments and condominiums” and “leasing and rental of residential apartments and condominiums” in International Class 36 and registrant’s hotel services.8 With regard to Applicant’s International Class 37 services, Applicant correctly points out that there is no persuasive evidence to establish a relationship between registrant’s hotel services and Applicant’s “real estate development; real estate development and construction of residential apartments and condominiums and hotel property” services. The Examining Attorney’s contention that “residential hotel condominiums and apartments can be purchased … during the course of the development and construction of the hotel,”9 even if true, does not mean that there is a relationship between those who offer hotel services and those who do the construction and development, mentioned in the evidence. Other than Applicant’s application and registrations containing both management and leasing of residential apartments and condominiums (which are related to hotel services) and real estate development and construction, there is no evidence to support a finding that registrant’s hotel services and Applicant’s International Class 37 services are related. Thus, we find that the record does not establish a relationship between registrant’s hotel services and Applicant’s International Class 37 services. 8 We need not consider whether each of Applicant’s identified services is related to registrant’s services; for purposes of a du Pont analysis, it is sufficient if likelihood of confusion is found with respect to use of an applicant’s mark in connection with any service in a particular International Class. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015). 9 Examining Attorney’s brief, 6 TTABVUE 10. Serial No. 86644110 - 7 - Turning to the classes of purchasers and trade channels, when recitations of services have no restrictions as to nature, type, channels of trade, or classes of purchasers, we must presume that the services travel through all usual channels of trade and are offered to all normal potential purchasers. Paula Payne Prods. Co. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973). See also Stone Lion, 110 USPQ2d at 1161. Here, there are no such restrictions in the operative recitations. Both registrant’s hotel services and Applicant’s International Class 36 leasing and rental of residential apartments and condominiums services will be provided to the same consumer, a member of the general public. Further, in view of the webpages set forth in the record, which refer to both hotel services and the leasing, management or rental of residential apartments and condominiums on the same page, we conclude that the trade channels for these services overlap. Applicant argues that the trade channels are different due to the geographic location where Applicant’s and registrant’s services are provided or the actual services that they provide.10 However, we must make our determinations based on the recitations of services set forth in the application and the cited registration(s) and not based on the actual services rendered. In re Dixie Rests. Inc., 41 USPQ2d at 1534. With regard to the International Class 37 services, there is no evidence which sheds light on trade channels and purchasers of Applicant’s International Class 37 10 Applicant’s brief at 11, 4 TTABVUE 12. Serial No. 86644110 - 8 - services. The factors concerning trade channels and purchasers for such International Class 37 services are therefore neutral in our analysis.11 Similarity or Dissimilarity of the Marks We next compare the marks for similarities and dissimilarities in appearance, sound, connotation and commercial impression. Id. at 1692. The test 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 services offered under the respective marks is likely to result. Coach Servs., 101 USPQ2d at 1721. Under actual marketing conditions, consumers do not necessarily have the luxury of making side-by-side comparisons between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. In re Assoc. of the United States Army, 85 USPQ2d 1264 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Where the services of an applicant and registrant are “similar in kind and/or closely related,” the degree of similarity between the marks required to support a finding of likelihood of confusion is not as great as in the case of diverse services. In re J.M. Originals Inc., 6 USPQ2d 1393, 1394 (TTAB 1987). Because the design element in the cited mark UNION STATION HOTEL and design arguably contains an additional point of difference with Applicant’s mark, we 11 We do note, however, that the general population, virtually all adults, uses hotel services. Serial No. 86644110 - 9 - confine our analysis to the issue of likelihood of confusion between Applicant’s mark and the cited registration for the mark UNION STATION HOTEL in standard character form. That is, if confusion is likely between those marks (UNION STATION HOTEL and VERMELLA AT UNION STATION both in standard characters), there is no need for us to consider the likelihood of confusion with the cited mark for UNION STATION with design elements; the standard character marks would be a sufficient basis for us to affirm the refusal of registration. Conversely, if there is no likelihood of confusion between Applicant’s mark and the cited mark in standard character form, then there would be no likelihood of confusion with the mark UNION STATION HOTEL and design. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). Applicant argues that VERMELLA is the dominant term in its mark in light of its position as the first term in the mark; that the cited marks do not contain this term;12 and that “the element ‘UNION STATION’ is associated with many train stations across the country and therefore it should not be attributed to any one particular geographic location. … Moreover, the element ‘UNION STATION’ in and of itself is not dominant or strong from a trademark standpoint.”13 For support, Applicant cites to statements made by registrant when it faced refusals of its applications under 12 Applicant’s brief at 5, 4 TTABVUE 6. 13 Applicant’s brief at 6, 4 TTABVUE 7. Serial No. 86644110 - 10 - Section 2(d) based on a registration for the mark UNION STATION BREWERY EST. 1993 and Design.14 Registrant argued: In this case, the common element of the marks – UNION STATION - is extremely weak and diluted. The primary train stations in many large U.S. cities, such as Chicago, Washington D.C., Los Angeles, Dallas, and others, are all called “Union Station.” … Consumers are therefore used to seeing “Union Station” used in a variety of different contexts, and do not associate it with any one geographic location or any one business. Therefore, even if hotels and restaurants are somewhat related, consumers will not automatically assume that a UNION STATION HOTEL is associated with or comes from the same source as a UNION STATION BREWERY. Applicant also respectfully disagrees with the Examining Attorney’s position that UNION STATION is the dominant portion of the cited mark. The cited registration incorporates a highly stylized and distinctive logo, featuring the design of a train. Although the general rule may be that word elements of a mark are more dominant than design elements, that does not apply here where the shared word elements are so weak. In this case, consumers are far more likely to remember the design of the cited mark. Furthermore, the additional terms BREWERY and HOTEL in the respective marks are also more than sufficient to distinguish the marks. Although these terms may be weak, they do serve to inform consumers about the type of services offered under the respective marks. … Therefore, the fact that the cited registration contains the term BREWERY will be sufficient for consumers to distinguish between the services offered under this mark and the services offered under Applicant’s UNION STATION HOTEL mark.15 14 Applicant’s brief at 6-7, 4 TTABVUE 7-8. 15 March 9, 2016 Resp., TSDR 18. Serial No. 86644110 - 11 - Applicant concludes, [I]t is clear that Applicant’s mark VERMELLA AT UNION STATION is not likely to be confused with the Cited Marks because (1) the inclusion of the element VERMELLA of Applicant’s Mark distinguishes it from the Cited Marks, since the common element ‘UNION STATION’ is weak and diluted and consumers would not associate it to any one business or geographic location; and (2) the clock tower design element of the Cited Mark under U.S. Registration No. 4,599,579 distinguishes such mark over the VERMELLA AT UNION STATION mark.16 The facts in this case do not align nicely with one another. First, as noted, registrant stated during the prosecution of its mark that “UNION STATION - is extremely weak and diluted.” Second, although registrant mentions various “Union Stations” in its papers filed with the Office, the record before us establishes only two “Union Stations,” one in Washington DC and the other in Chicago. See unionstationdc.com webpage and Wikipedia article regarding Chicago’s Union Station.17 The Wikipedia pages in the record regarding a Dallas and a Los Angeles Union Station state “Wikipedia does not have an article with this exact name,”18 and do not provide any information about such Union Stations. They thus have extremely limited probative value. Third, although Applicant states that “consumers would not associate [UNION STATION] to any one business or geographic location,” it has not disclaimed any rights to UNION STATION in its mark; if its mark registers, it may be able to exclude others from using UNION STATION for similar services. Fourth, 16 Applicant’s brief at 8, 4 TTABVUE 9. 17 March 9, 2016 Resp., TSDR 45 and 47-60. 18 March 9, 2016 Resp., TSDR 44 and 61. There is a passing reference to a Union Station in Los Angeles at TSDR 32 in the Wikipedia material regarding Chicago’s Union Station. Serial No. 86644110 - 12 - Applicant has not submitted any evidence of actual third-party trademark use of UNION STATION or of third-party registrations. Thus, from the record before us, it appears that registrant is the only entity using UNION STATION as a trademark.19 Fifth, registrant, as the owner of two subsisting registrations, which were registered without resort to Section 2(f) of the Trademark Act, 15 U.S.C. § 1057(b), is entitled to the presumption of validity of its registrations accorded by Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b). UNION STATION (which is followed by the generic term “hotel” in registrant’s mark), as a term that has not been disclaimed, cannot be viewed as lacking source indicative capacity. With regard to registrant’s statements made during the prosecution of its applications, we need not accord them the weight Applicant would have us accord such statements. The Federal Circuit has stated that “[a]lthough estoppel based on prosecution of an application has played a more limited role for trademarks than for patents, we have recognized that such comments have significance as facts ‘illuminative of shade and tone in the total picture confronting the decision maker.’” Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015) (citations omitted). See also, Interstate Brands Corp. v. Celestial Seasonings, Inc., 576 F.2d 926, 198 USPQ 151 (CCPA 1978) (a prior inconsistent position on likely confusion is admissible evidence, but is not binding, when the court noted that such prior arguments in ex parte applications are relevant “as merely 19 The record says nothing as to whether UNION STATION BREWERY is still a registered mark. Serial No. 86644110 - 13 - illuminative of shade and tone in the total picture” but do not “relieve the decision maker of the burden of reaching his own ultimate conclusion on the entire record.”). Additionally, in M.C.I. Foods, Inc. v. Bunte, 96 USPQ2d 1544, 1552 (TTAB 2010), the Board found that a registrant’s arguments to the Examining Attorney that the design part of the word-design mark was dominant did not prevent the Board from finding to the contrary that the word part was dominant. These statements by registrant hence do not carry the day for Applicant. Rather, under the facts before us, we find registrant’s UNION STATION HOTEL mark is a suggestive mark, and not so weak as to allow for the registration of Applicant’s mark. The evidence before us (including the fact that Applicant submitted evidence regarding only two railroad stations named “Union Station” in the United States, and no third-party trademark uses or registration of marks including “Union Station” for similar services) does not support registrant’s statement, which Applicant repeats, that UNION STATION is “extremely weak and diluted.” In addition, VERMELLA AT UNION STATION connotes, through the inclusion of the word AT, that Applicant’s services are rendered at Union Station, in the same way that registrant’s mark identifies a hotel at Union Station.20 (HOTEL in registrant’s mark is a generic term which we do not ignore, but which does not function as an 20 Applicant submitted a webpage from the Union Station Hotel in Nashville, which states that the hotel was “[o]riginally built as a majestic railway station in 1900 [and] captures America’s great railroad era in a splendidly restored setting that reflects the timeless grandeur of the Victorian age with contemporary luxury.” March 9, 2013 Resp., TSDR 67. (The webpage does not identity the name of this railroad station in Nashville.) Applicant states that the hotel services of the cited registration are provided at this hotel. Applicant’s brief at 11, 4 TTABVUE 12. Serial No. 86644110 - 14 - indicator of source in connection with registrant’s hotel services.) The inclusion of UNION STATION, in the same word order, in both marks also renders the marks similar in appearance and sound. “Two marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). Applicant argues that VERMELLA “is akin to a house mark” and is the dominant component of its mark because it owns registrations for this term, or incorporating this term, and that consumers would generally be more inclined to focus on the first word of a mark, citing Palm Bay, 73 USPQ 2d at 1692.21 Under the circumstances of this case, where Applicant’s mark includes the additional wording AT UNION STATION, we do not agree that the proposition set forth in Palm Bay cited by Applicant applies. Rather, we find that AT UNION STATION forms as much a part of the commercial impression of the mark as VERMELLA in that it connects Applicant’s services to the establishment of another. The Federal Circuit has cautioned that because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, the analysis cannot be predicated on dissecting 21 Applicant’s brief at 5-6, 4 TTABVUE 6-7, Reply brief at 5, 7 TTABVUE 6. We point out that the addition of a trade name or house mark to a registered mark does not generally avoid confusion. In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1364 (TTAB 2007) (citing Menendez v. Holt, 128 U.S. 514, 521 (1888)). “However, there is no arbitrary rule of law that if two product marks are confusingly similar, likelihood of confusion is not removed by use of a company or house mark in association with the product mark.” New England Fish Co. v. The Hervin Co., 511 F.2d 562, 184 USPQ 817, 819 (CCPA 1975) (BLUE MOUNTAIN KITTY O’s and KITTY not similar). Serial No. 86644110 - 15 - the marks into their various components. In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). Thus, we do not give greater weight to VERMELLA because it is the first term in Applicant’s mark. In view of the foregoing, we find that contrary to Applicant’s position, registrant’s mark is not highly suggestive, but rather must be accorded a normal scope of protection.22 We find the marks to be similar in sound, sight, meaning and commercial impression due to the shared term UNION STATION. Conditions Under Which, and Buyers to Whom, Sales are Made Applicant argues as follows regarding this factor: Here, the services covered by Applicant’s Mark are not “impulse” services, but are services that must meet rigorous standards of professionalism and quality due to their inherent nature. As described above, Applicant’s real estate services are marketed to and utilized by professionals, such as apartment building and condominium owners, developers, and investors. These professionals would exhibit particular care and discrimination when purchasing and utilizing the services provided under Applicant’s Mark.23 As the Examining Attorney points out, when the relevant consumer includes both professionals and the general public, the standard of care for purchasing the goods or 22 Tribunals have considered the familiarity of a term in deciding whether confusion was likely. See, e.g., Champion Home Builders Co. v. American Motors Corp., 197 USPQ 333 (E.D. Mich. 1978), where the court in considering whether CONCORD for an automobile was likely to be confused with CONCORD for a motor home or other recreational vehicle, stated, “There is no reason to infer that the public will associate a ‘Concord’ motor home, or other recreational vehicle, with the ‘Concord’ compact automobile made by the defendant. This is particularly true where, as here, the name used by each is a familiar name with well-known historic and geographical connotations.” Id. at 333. UNION STATION does not have a specific and well-known historic and geographical connotations that CONCORD does. 23 Applicant’s brief at 12, 4 TTABVUE 13. Serial No. 86644110 - 16 - services is that of the least sophisticated potential purchaser. Stone Lion Capital, 110 USPQ2d at 1163. A member of the general public, who is the least sophisticated potential purchaser of the involved services, may stay in a hotel and rent a residential apartment and a condominium, both for a short period of time. Thus, we are not persuaded by the distinction Applicant makes between purchasers and find that a consumer of both Applicant’s and registrant’s services may use only ordinary care in selecting such services. However, potential consumers of real estate development and construction services would inherently exercise heightened care in the purchasing decision. Balancing the factors We have found that Applicant’s mark and the cited word mark are similar, the International Class 36 services are related to registrant’s hotel services and that these services are provided to the same purchasers through overlapping trade channels, with consumers using ordinary care in their purchases. We therefore find that there is a likelihood of confusion between Applicant’s mark for its International Class 36 services and registrant’s mark for its hotel services. As for the International Class 37 services, the record does not establish a relationship between such services and registrant’s services as there is an absence of evidence on this factor, and such services would be subject to heightened care in the purchasing decision. We therefore find that the record does not support a finding of likelihood of confusion between Applicant’s mark for its International Class 37 services and registrant’s mark for its hotel services. Serial No. 86644110 - 17 - Decision: The refusal to register is reversed for Applicant’s International Class 37 services and affirmed for Applicant’s International Class 36 services.