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Jennifer Gaeta | Bloomberg LawIn re Hartz Hotel Services, Inc., Serial No. 76/692,673 (T.T.A.B. Mar. 19, 2012) The Trademark Trial and Appeal Board ("TTAB") reversed a refusal to register GRAND HOTELS NYC based on likelihood of confusion with the previously registered GRAND HOTEL mark. In doing so, the TTAB clarified that highly suggestive marks are entitled only to a narrow scope of protection.
Hartz's Application and RegistrationsHartz Hotel Services, Inc. filed an intent-to-use application for GRAND HOTELS NYC, for intended use in connection with "hotel services," ("HOTELS NYC" disclaimed). Hartz at 1. Hartz also owns the following registrations including GRAND HOSPITALITY for "hotel services," ("hospitality" disclaimed), GRAND BAR & LOUNGE for "restaurant and bar services" ("BAR & LOUNGE" disclaimed), and CHELSEAGRANDHOTEL.COM for "reservation services, namely, making reservations for lodging." Id. at 1-2. The examining attorney refused registration on likelihood of confusion grounds with the previously registered GRAND HOTEL mark ("HOTEL" disclaimed) for "hotel and restaurant services" and GRAND HOTEL for a variety of goods such as soaps, shampoos, etc. Id. at 2.
TTAB Reverses RefusalWhether there is a likelihood of confusion is based on an analysis of the probative facts in evidence and the relevant likelihood of confusion factors. The TTAB concentrated only on the GRAND HOTEL registration for the same services, explaining that the services described were, in part, identical and because the services were identical, the channels of trade and classes of consumers would be identical. As for the strength of the mark, the TTAB explained that as a registered mark, GRAND HOTEL was entitled to a presumption of validity, and could not be considered merely descriptive. Thus, the mark was at least suggestive. On the consideration of exclusive use, Hartz had submitted multiple registrations that also used "GRAND HOTEL" as part of the mark and a report from a private investigator who confirmed use of the "GRAND HOTEL" marks. Hartz further submitted website evidence demonstrating use of the "Grand Hotel" phrase in connection with a number of different hotels. Most of the uses of the phrase "Grand Hotel" also used that phrase in conjunction with additional geographic material, for example, "Anchorage Grand Hotel in Anchorage, Alaska." Hartz at 8. "Because of the highly suggestive nature" of the phrase "Grand Hotel," the addition of geographic material along with that phrase had been sufficient in the past to differentiate them. Id. at 10. Thus, the mark GRAND HOTEL, as used in connection with hotel services, was afforded only a narrow scope of protection. With that in mind, the TTAB found that the marks were sufficiently dissimilar to avoid a likelihood of confusion. The TTAB recognized that the GRAND HOTELS NYC and the GRAND HOTEL marks only differed by making "hotel" plural and adding the geographic term "NYC." In other cases, such small differences may be insufficient to distinguish the marks. "However, given the fact that third-party registrations for hotel services have issued for marks which differ from the registrant's by only the inclusion of a geographic indicator, and without objection by the registrant, it would appear that the registrant itself considers the inclusion of the geographic indicator to be sufficient to distinguish the marks." Id. at 12. Accordingly, the TTAB reversed the refusal to register. DisclaimerThis document and any discussions set forth herein are for informational purposes only, and should not be construed as legal advice, which has to be addressed to particular facts and circumstances involved in any given situation. Review or use of the document and any discussions does not create an attorney-client relationship with the author or publisher. To the extent that this document may contain suggested provisions, they will require modification to suit a particular transaction, jurisdiction or situation. Please consult with an attorney with the appropriate level of experience if you have any questions. Any tax information contained in the document or discussions is not intended to be used, and cannot be used, for purposes of avoiding penalties imposed under the United States Internal Revenue Code. Any opinions expressed are those of the author. The Bureau of National Affairs, Inc. and its affiliated entities do not take responsibility for the content in this document or discussions and do not make any representation or warranty as to their completeness or accuracy.©2014 The Bureau of National Affairs, Inc. All rights reserved. Bloomberg Law Reports ® is a registered trademark and service mark of The Bureau of National Affairs, Inc.
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