Shakopee Mdewakanton Sioux Communityv.Dubuque Racing Assn., Ltd.

Trademark Trial and Appeal BoardJul 11, 2016

No. 91214696 (T.T.A.B. Jul. 11, 2016)

This Opinion is not a Precedent of the TTAB Mailed: July 11, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Shakopee Mdewakanton Sioux Community v. Dubuque Racing Assn., Ltd. _____ Opposition No. 91214696 to application Serial Nos. 77639259; 77674545; and 86015244 _____ Jodi A. DeSchane of Faegre Baker Daniels for Shakopee Mdewakanton Sioux Community. James C. Nemmers of Shuttleworth & Ingersoll, PLC for Dubuque Racing Assn., Ltd. ______ Before Seeherman, Cataldo and Shaw, Administrative Trademark Judges. Opinion by Cataldo, Administrative Trademark Judge: Dubuque Racing Assn., Ltd. (“Applicant”) applied to register on the Principal Register MYSTIQUE (in standard characters)1 and 2 as marks for the following services: 1 Application Serial No. 77639259 was filed on December 23, 2008. 2 Application Serial No. 77674545 was filed on February 20, 2009 with the following description and color statement: The mark consists of “MYSTIQUE” with crown-like design above the letter “I”. Color is not claimed as a feature of the mark. Opposition No. 91214696 - 2 - casino services; entertainment in the nature of casino gaming, namely, slot machines, table games including blackjack, craps, roulette, and poker, video poker machines, live and simulcast greyhound dog racing and simulcast horse racing; entertainment in the nature of live performances by professional entertainers, namely, live national music acts, live comedy shows featuring comedians, hypnotists, and ventriloquists, and live local and regional musical bands; conducting special events featuring casino and gaming contests and tournaments in International Class 41; and MYSTIQUE (in standard characters)3 as a mark for restaurant and hotel services in International Class 43. All three applications were filed under Section 1(b) of the Trademark Act, based on Applicant’s assertion of a bona fide intent to use the mark in commerce. Shakopee Mdewakanton Sioux Community (“Opposer”) filed an opposition to the registration of Applicant’s marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks are likely to cause confusion with Opposer’s marks. Opposer asserts ownership of 20 registrations for the mark MYSTIC and derivations thereof, including the following: MYSTIC (typed or standard characters)4 for entertainment services, namely providing casino facilities in International Class 41;5 and for services including 3 Application Serial No. 86015244 was filed on July 19, 2013. 4 Effective November 2, 2003, Trademark Rule 2.52, 37 C.F.R. §2.52, was amended to replace the term “typed” drawing with “standard character” drawing. A mark depicted as a typed drawing is the legal equivalent of a standard character mark. 5 Registration No. 2126487 issued January 6, 1998. Section 8 affidavit accepted; Section 15 affidavit acknowledged. First Renewal. Opposition No. 91214696 - 3 - hotel services, arena services, namely, providing facilities for sports, concerts, conventions, trade shows, conferences, exhibitions, and banquets; restaurant services; food preparation and catering services in International Class 42.6 In its answer, Applicant denied the salient allegations of the notice of opposition.7 By operation of the rules, the record includes the pleadings and the files of the opposed applications. The parties also submitted testimony with attached exhibits and additional evidence under notices of reliance. Certain of the testimony and evidence has been submitted under seal as “confidential”; we have discussed such material only in general terms as necessary to support our determination. The proceeding has been fully briefed. Priority and Standing Standing is a threshold issue that must be proven by a plaintiff in every inter partes case. Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982). To establish standing in an opposition, an opposer must show both a real interest in the proceedings as well as a reasonable belief of damage. Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014); Ritchie v. Simpson, 50 USPQ2d at 1025. 6 Registration No. 2799696 issued on December 30, 2003. Section 8 affidavit accepted; Section 15 affidavit acknowledged. First Renewal. The registration recites additional services in International Classes 35, 39, and 41. 7 In its answer, Applicant further “affirmatively alleges” matters that amplify its denials of the salient allegations in the notice of opposition, and have been so construed. Opposition No. 91214696 - 4 - In this case, Opposer made of record under notice of reliance copies of its pleaded registrations showing current status of the registrations and title in Opposer.8 In view thereof, Opposer has established its standing, and priority is not in issue with respect to the marks and the goods and/or services set out in these registrations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); and King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). Likelihood of Confusion Our determination under Section 2(d) is based on an analysis of all of the relevant, probative evidence in the record related to the issue of 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 Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/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 du Pont factors for which there are relevant arguments and evidence. For purposes of our likelihood of confusion analysis, we focus on pleaded 8 12 TTABVUE 5-128. Opposition No. 91214696 - 5 - Registration Nos. 2126487 and 2799696. We find these registrations to be the most relevant of Opposer’s pleaded registrations for our du Pont analysis. Accordingly, if we find a likelihood of confusion as to these pleaded registrations, the opposition can be sustained on this basis. On the other hand, if we do not reach that conclusion, we would not find it as to the other pleaded registrations either. See In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). The Services, Channels of Trade and Classes of Consumers We first consider the du Pont factor regarding the similarity or dissimilarity of the parties’ respective services. In making our determination, we compare Opposer’s services as they are identified in its registrations and Applicant’s services as they are identified in its involved applications. See Packard Press Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1354 (Fed. Cir. 2000). The respective services need only be “related in some manner and/or the circumstances surrounding their marketing [be] such that they could give rise to the mistaken belief that the services emanate from the same source.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012). In this case, the services in Applicant’s application Serial Nos. 77639259 and 77674545 include, inter alia, “casino services; entertainment in the nature of casino gaming, namely, slot machines, table games including blackjack, craps, roulette, and poker, video poker machines, live and simulcast greyhound dog racing and simulcast horse racing.” Applicant’s broadly recited “casino services” include Opposer’s somewhat more narrowly recited “entertainment services, namely providing casino Opposition No. 91214696 - 6 - facilities” in its Registration No. 2126487. As a result, Applicant’s services are, in part, legally identical to services identified in Opposer’s Registration No. 2126487. Furthermore, it is not necessary that Opposer prove likelihood of confusion with respect to all of the services set forth in Applicant’s applications. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937 (Fed. Cir. 1983); Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986 (CCPA 1981). The identity in part of the recited services is sufficient for purposes of our determination. Both Applicant’s application Serial No. 86015244 and Opposer’s Registration No. 2799696 include “restaurant and hotel services” in their identifications. Applicant’s services in this application thus are identical to some of the services recited in Opposer’s registration. We recognize that these services are classified in Class 42 in Opposer’s registration and Class 43 in Applicant’s application. However, the reclassification of these services from Class 42 to Class 43 is immaterial to our consideration of their similarity.9 The classification of goods and services has no bearing on the question of likelihood of confusion. See Jean Patou, Inc. v. Theon Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993). Rather, it is the manner in which the applicant and/or registrant have identified their goods or services that is 9 Effective January 1, 2002, the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks (“Nice Agreement”) was amended to add three new service classes (Classes 43 through 45). These new classes arose from the extensive restructuring of Class 42. In the course of that restructuring, many activities were removed from Class 42 and placed in one of the three new classes. Trademark Manual of Examining Procedure (TMEP) § 1401.09. Opposition No. 91214696 - 7 - controlling. See Nat’l Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 & n.5 (TTAB 1990). Finally, while Applicant is correct that “this factor [of the similarity of the services] alone is not determinative of likelihood of confusion,”10 it nonetheless “admits that the services for which Opposer has obtained registrations and the services for which Applicant is seeking registration are generally the same.”11 Because the services identified in the applications and the pleaded registrations are in part identical, we must presume that the channels of trade and classes of purchasers are the same. See Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003); In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers”). Applicant’s argument that the trade channels differ due to its status as a not-for- profit corporation largely controlled by the city of Dubuque, Iowa, the distance between the respective physical locations of the parties’ casinos and the asserted proliferation of other casinos nearer to that of Opposer is misplaced.12 As noted in the preceding paragraph, where the services are in part identical, we must presume overlapping trade channels and classes of purchasers. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 10 31 TTABVUE 12. 11 Id. 12 Id. at 16; 25 TTABVUE 1-28. Opposition No. 91214696 - 8 - 1990) (“The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers to which the sales of goods are directed”). Furthermore, because there are no geographic limitations recited in Opposer’s pleaded registrations, and also because Applicant did not counterclaim to cancel or restrict them, we must accord these registrations the presumption of validity provided for in Trademark Act Section 7(b), 15 U.S.C. § 1057(b), including the presumption of the owner’s exclusive right to use the registered mark in commerce. That right includes using the mark in the geographic region in which Applicant offers its services under the involved marks.13 We find, as a result, that the du Pont factors of the similarity of the services and their channels of trade and classes of consumers favor a finding of likelihood of confusion. The Marks A. Strength of Opposer’s Marks We begin by considering the strength of Opposer’s marks. Opposer argues that its marks are strong and entitled to a broad scope of protection. In support of its position, Opposer submitted confidential testimony regarding gross revenues and advertising expenditures under its marks from 2007 – 2010.14 Opposer’s revenue and advertising 13 The applications at issue similarly are geographically unrestricted, allowing Applicant to use its marks in the same geographic regions as Opposer. 14 16 TTABVUE 1-9. Opposition No. 91214696 - 9 - numbers are very substantial. Opposer does not assert that its marks are famous, and we note that Opposer has not placed these figures in a context that would prove fame. See Bose Corp. v. QSC Audio Products, 63 USPQ2d 1303, 1309 (Fed. Cir. 2002). However, even these raw numbers of gross revenues and marketing expenditures are sufficient to show that Opposer has enjoyed significant success in operation of its services under its marks. In addition, Opposer submitted testimony and evidence regarding unsolicited press coverage of its services under its marks from a variety of national and regional media outlets.15 Applicant, for its part, submitted Internet evidence of use of 5 “Mystic” formative marks by third parties and also use of the term to identify a geographic location in support of its position that Opposer’s MYSTIC marks are weak:16 Mystic Islands Casino in Little Egg Harbor, New Jersey, is a restaurant and bar featuring pool tables and trivia games but specifically advertises that it is not a casino and does not provide casino games such as slots or gaming tables; Mystic Lake YMCA Camp in Lake, Michigan, provides camping grounds and related activities; Mystic Lake Manor in Madison, Florida, provides hotel services; Mystic Country is an Internet website advertising services available in Mystic Connecticut, including Mystic Aquarium, as well as Mohegan Sun and Foxwoods casinos; Mystic Pizza is a movie from 1988; and Mystic River is a river in Massachusetts. 15 Id. at 1-11. 16 20 TTABVUE 1-13. Opposition No. 91214696 - 10 - With regard to Applicant’s evidence of third-party use, Mystic Islands Casino is the only third party using MYSTIC, MYSTIQUE or a formative of either term as a mark for restaurant services. The only evidence of use of a MYSTIC mark for a hotel is by Mystic Lake Manor. Both of these marks include additional wording that distinguish them from Registrant’s marks. There are no third-party uses of MYSTIC/MYSTIQUE or formative marks in connection with casinos or casino-related services. Applicant also submitted the following third-party registrations for MYSTIC- formative marks for a variety of goods and services:17 Registration No. 4460011 for the mark MYSTIC for decorative planters for flowers and plants; Registration No. 4433233 for the mark MYSTIC for bowling balls; Registration No. 4383243 for the mark MYSTIC LOGISTICS for various transportation logistics and warehousing services; Registration No. 4379325 for the mark MYSTIC CHEF for video broadcasting and conducting workshops and programs in the field of the culinary arts; Registration No. 4351226 for the mark MYSTIC GATE for various card games and accessories therefor; Registration No. 4021610 for the mark MYSTIC MERMAIDS for an amusement park show and conducting parties related thereto; Registration No. 4304322 for the mark MYSTIC PIXIES for live performances featuring contortionists; Registration No. 3378105 for the mark MR. MYSTIC for live performances by a comic magician; 17 23 TTABVUE 1-50. In addition, Applicant submitted copies of two cancelled registrations, which are not evidence of anything except that they issued. See Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650 (TTAB 2002). Any benefits conferred by the registrations, including the evidentiary presumptions afforded by Section 7(b) of the Trademark Act, were lost when the registrations expired. See, e.g., Anderson, Clayton & Co. v. Krier, 478 F.2d 1246, 178 USPQ 46 (CCPA 1973). Opposition No. 91214696 - 11 - Registration No. 4214698 for the mark THE GOLF MYSTIC and the design of the country of Ireland for golf instruction; Registration No. 3386908 for the mark MYSTIC DUNES and the design of sand dunes and a golf flag for real estate brokerage, leasing and management of property; Registration No. 327600 for the mark MYSTIC RADIO for radio programs featuring a psychic; Registration No. 3032657 for the mark MYSTIC MONA for taro and psychic readings; Registration No. 2729420 for the mark MYSTIC WORLD FELLOWSHIP for audio and video tapes, newsletters and books, online newsletters, and an ongoing radio and television program in the fields of mysticism and metaphysics; Registration No. 3157638 for the mark MYSTIC for powders used to make teas, hot chocolate and mocha coffee; Registration No. 3158283 for the mark MYSTIC PETE for live performances by a musical band; Registration No. 2966197 for the mark MYSTIC BLUE and Registration No. 3238643 for the mark MYSTIC BLUE CRUISES for day cruises featuring meals and entertainment, “excluding gaming and gaming related entertainment;” Registration No. 4293803 for the mark CAMP MYSTIC in stylized form for summer camps and Registration No. 4296720 for the mark CAMP MYSTIC for various classes including aerobics, arts and crafts, various sports, chorus, cooking, dancing; Registration No. 4257873 for the mark MYSTIC EXPLORERS and sunburst design for various telecommunications services in the fields of meditation, spirituality, metaphysics, “excluding any gaming or casino-themed materials or content;” Registration No. 3315391 for the mark MAGIC FOREST for computer and video game software; Opposition No. 91214696 - 12 - Registration No. 4210196 for the mark MYSTIC ICE BLAST for providing temporary use of a non-downloadable computer game; Registration No. 2860837 for the mark MYSTIC HEROES for video games, “all excluding computer video games and video output game machines that are casino-themed or that allow the user to pay any form of consideration for the chance to win a prize;” Registration No. 2210609 for the mark MYSTIC REALMS for “role playing games; costume masks; fake weapons and armor for use in role playing games; board games” and “entertainment services, namely, providing facilities for playing role playing games;” Registration Nos. 1551426 and 2717125 for the mark MYSTIC PIZZA in stylized form for pizza carry-out and restaurant services, pizza cutters and slicers; Registration No. 2430765 for the mark MYSTIC AQUARIUM and wave design for aquarium services; and Registration No. 1050370 for the mark MYSTIC SEAPORT for retail and mail order gift and variety stores and Registration No. 1160355 for the mark MYSTIC SEAPORT MUSEUM for museum services related to maritime and historical matters. Of the approximately 30 third-party registrations introduced into the record by Applicant, none of them recites casino, restaurant or hotel services, or any goods or services related to the services at issue herein. Indeed, several of the registrations specifically exclude casino or gambling-related goods and services in their recitations.18 The mark MYSTIC GATE identifies card games, but there is no indication that they include casino-style card games such as poker or blackjack. The majority of the goods and services include bowling balls, 18 The file histories of only two of the third-party registrations are of record, and neither of those registrations includes the exclusionary language discussed above. Accordingly, we will not speculate as to the reasons such language appears in the identifications of goods and services in those registrations in which it is present. Opposition No. 91214696 - 13 - decorative planters, non-casino-themed video games, psychic readings and aquaria, i.e., goods and services having little, if any, connection to the services at issue herein. Cf. Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). Further, Applicant has shown that Opposer did not oppose registration of four “Mystic” and “Mystique” formative marks.19 These are the following two registrations: Registration No. 4579186 for the mark MYSTIC MOTEL for “entertainment services in the nature of an amusement park attraction;” and Registration No. 2210609 for the mark MYSTIC REALMS (noted above) for “role playing games; costume masks; fake weapons and armor for use in role playing games; board games” and “entertainment services, namely, providing facilities for playing role playing games;” and the following two applications, both of which were abandoned for failure to file a Statement of Use: Application Serial No. 77120895 for the mark MYSTIQUE for “entertainment in the nature of magic shows; entertainment in the nature of shows featuring magic, illusions, drama, music and/or dance;” and Application Serial No. 77149606 for the mark MYSTIQUE for services including hotel, restaurant and bar services and providing facilities for exhibitions and conferences. In its brief, Applicant asserts a claim of laches and estoppel with respect to these third-party marks. However, such affirmative defenses were never pleaded, nor were they tried by implied consent. See footnote 25. We therefore consider them only in terms of “the number and nature of similar marks in use for similar services,” the 19 21 TTABVUE 6-7; 22 TTABVUE 1-617. Opposition No. 91214696 - 14 - purpose for which they were submitted, according to Applicant’s Third Notice of Reliance. The abandoned intent-to-use applications have no probative value except to show that they were filed. See Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463 (TTAB 2003) (applications show only that they have been filed). Certainly intent-to-use applications for which no Statements of Use were filed do not show use of the third-party marks. As for the two third-party registrations, they are not evidence of use of the marks and, in addition, they are for such different services from those of the Opposer that they have no probative weight in terms of showing that Opposer’s marks are entitled to a limited scope of protection. The totality of the evidence presented by Applicant fails to show that the term MYSTIC as it appears in Opposer’s marks is weak and diluted as applied to casinos, restaurant or hotel services. The third-party examples of use and registration for unrelated goods and services cannot be used to justify the registration of a confusingly similar mark for, in part, identical services to those in Opposer’s registrations. Cf. Plus Products v. Star-Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983) (“[T]hird party registrations relied on by applicant cannot justify the registration of another confusingly similar mark”). Therefore, the evidence does not show that Opposer’s marks are so highly suggestive as to be entitled to such a narrow scope of protection as to allow registration for the identical services of Applicant’s very similar marks, as discussed below. Opposition No. 91214696 - 15 - B. Comparison of the Parties’ Marks We consider and compare the appearance, sound, connotation and commercial impression of the marks in their entireties. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692. Opposer’s marks are MYSTIC and and the marks in the involved applications are MYSTIQUE and . The marks are similar in appearance and sound to the extent that both consist of the identical first syllable “MYST-” and a second syllable “-IC” and “-IQUE” that are highly similar in pronunciation. Although the second syllable differs slightly in appearance and sound, and the stylized versions of the parties’ marks differ in the slightly stylized presentation of and the minor design element in , the marks convey a very similar appearance. With regard to meaning, Opposer made of record several definitions of the terms comprising the marks at issue, including the following:20 mystic – of or relating to mysteries or esoteric rites: OCCULT; mysterious;21 and mystique – an air or attitude of mystery and reverence developing around something or someone; the special esoteric skill essential in a calling or activity.22 20 13 TTABVUE 5-15. Applicant made additional definitions of record at 24 TTABVUE 1-32 that generally conform to the definitions set forth herein. 21 Merriam-Webster’s Collegiate Dictionary, 11th Ed. (2014). 22 Id. Opposition No. 91214696 - 16 - As can readily be seen, Opposer’s MYSTIC marks are very similar in meaning to Applicant’s MYSTIQUE marks. The former relates to mysteries or esoteric rites and the latter relates to an esoteric air of mystery or reverence. Thus, we find that they are similar in meaning and overall commercial impression. We further find that the slight stylization in and are insufficient to overcome the similarities between the marks, especially when spoken. Overall, the marks are similar in appearance, pronunciation, meaning and commercial impression. We find therefore that the du Pont factor of the similarity of the marks also favors a finding of likelihood of confusion. Conditions of Sale of Parties’ Goods and Services Applicant argues that Casino consumers spend discretionary dollars. The proliferation of gambling revenues nationwide (even the State of Iowa now has five casinos) means that customers have choices, and will exercise that discretion to select venues providing the greatest overall value to them. They will choose a nearer casino than one further away, they will choose a casino that they perceive to provide them with higher chances of winning on particular slot machines or table games, and they will find some facilities more aesthetically pleasing than others.23 Applicant cites to Planet Hollywood (Region IV), Inc. v. Hollywood Casino Corp., 80 F. Supp. 2d 815, 847-48, 898 (N.D. Ill. 1999), in support of its contention that casino patrons engage in careful and deliberate decisions regarding their selection of casino venues. However, the defendant in that trademark infringement case submitted expert witness testimony and evidence regarding the habits of its casino aficionados 23 Id. at 15. Opposition No. 91214696 - 17 - and customers. The Court found on the particular facts and record of that case that defendant’s patrons exercised a higher degree of care in selection of their casinos. Applicant in this case has only submitted evidence of the geographic origins of its patrons.24 Such evidence indicates where Applicant’s patrons reside, but sheds little light on their reasons for selecting Applicant’s services or how, in general, casino patrons choose the casinos they patronize. There is nothing in the record of this case to show that Applicant’s patrons do not include ordinary consumers “who, in many instances, would employ nothing more than ordinary care in making their purchasing decisions about where to gamble, lodge, eat or drink.” In re Jack B. Binion, 93 USPQ2d 1531 (TTAB 2009). We find on this record that the parties’ services are likely to be purchased by consumers exercising ordinary care. Accordingly, we deem this du Pont factor to favor a finding of likelihood of confusion. Lack of Actual Confusion Applicant argues that there have been no instances of actual confusion despite the parties’ use of their respective marks for over seven years.25 We note, however, that 24 26 TTABVUE 1-13. 25 25 TTABVUE 1-28. To the extent that Applicant attempts to advance the affirmative defense of laches or estoppel in its arguments regarding the asserted delay on the part of Opposer in bringing this opposition or its decision not to oppose the third-party registrations and applications discussed above, as we previously stated Applicant did not plead laches or estoppel in its answer, nor was the issue tried by implied consent: on the contrary, Opposer objected thereto in its reply brief. In any event, laches does not begin to run in an opposition proceeding until the applicant’s mark has been published for opposition. National Cable Television Assn Inc. V. American Cinema Editors Inc., 937 F.2d 1572, 19 USPQ2d 1424 (Fed. Cir. 1991). Applicant’s arguments are construed as addressing the length of time the parties have used their respective marks without evidence of actual confusion. Opposition No. 91214696 - 18 - while evidence of confusion may be very useful to our analysis, the lack of evidence of actual confusion carries little weight. J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). It has often been recognized that such evidence is very difficult to obtain. Lebanon Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1834 (TTAB 2012). Accordingly, we find this du Pont factor to be neutral. Applicant’s Intent in Adopting Its Mark Opposer argues that “Applicant selected the name ‘Mystique’ for its Iowa casino even though [Opposer’s] Mystic Lake Casino Hotel – the largest casino in the Midwest – has been operating just across the border in southern Minnesota for nearly twenty years.”26 To the extent that Opposer is arguing that Applicant adopted its mark in bad faith, there is insufficient evidence to show this or from which we can infer this. Mere knowledge of the existence of Opposer’s marks does not, in and of itself, constitute bad faith. See Action Temporary Services Inc. v. Labor Force Inc., 870 F.2d 1563, 10 USPQ 1307 (Fed. Cir 1989) ; Ava Enterprises, Inc. V. Audio Boss USA, Inc., 77 USPQ2d 1783 (TTAB 2006). Opposer must show that Applicant intentionally sought to trade on Opposer’s good will, and such evidence is lacking here. Cf. L.C. Licensing Inc. v. Berman, 86 USPQ2d 183, 1891 (TTAB 2008) (bad faith adoption of a mark is strong evidence that confusion is likely because an inference may be drawn from the imitator’s expectation of confusion); Broadway Catering Corp. v. Carla Inc., 215 USPQ 462, 465 (TTAB 1982) (“One’s wrongful intent to trade on the trademark 26 31 TTABVUE 21. Opposition No. 91214696 - 19 - or trade name of another is strong evidence that confusion is likely. Such inference is drawn from the imitator’s own expectation of confusion as to the source of his product”). Actions of Examining Attorney Finally, Applicant argues that the Trademark Examining Attorney assigned to its involved applications did not cite Opposer’s marks during prosecution, which it asserts “is a clear indication that the Examining Attorney did not consider MYSTIC and MYSTIQUE to be similar in sight, sound, or commercial impression, even though the services provided by both parties were substantially similar.”27 However, it is settled that we are not bound by the decisions of Examining Attorneys. If that were the case, an opposition proceeding would be a nullity when the Opposer is relying on its registered mark. The Board must make its own findings of fact, and that duty may not be delegated by adopting the conclusions reached by an Examining Attorney. In re Sunmarks, Inc., 32 USPQ2d 1470, 1472 (TTAB 1994); In re BankAmerica Corp., 231 USPQ 873, 876 (TTAB 1986). Conclusion We have considered all of the du Pont factors for which Opposer and Applicant have introduced evidence or have submitted argument. The rest we consider neutral. Based upon the totality of the evidence of record, including any evidence not specifically discussed herein, we find that Applicant’s services are identical in part to Opposer’s services, and that they are presumed to be encountered in the same 27 36 TTABVUE 14. Opposition No. 91214696 - 20 - channels of trade by the same classes of consumers exercising an ordinary level of care. We find that Opposer’s mark is strong and entitled to a broad scope of protection. We further find that the parties’ marks appear and sound similar, carry related meanings and convey a similar commercial impression. As a result, despite the lack of evidence of actual confusion, we find that Applicant’s marks, when used in connection with its services, are likely to cause confusion with Opposer’s marks for the services recited in its registrations. Decision: The opposition is sustained, and registration of Applicant’s marks MYSTIQUE and for its services in Classes 41 and 43 is refused.