Thursday, March 22, 2012

Precedential No. 14: TTAB Reverses 2(d) Refusal of GRAND HOTEL NYC over GRAND HOTEL for Hotel Services

The Board reversed a Section 2(d) refusal of GRAND HOTELS NYC for hotel services [HOTELS NYC disclaimed], finding the mark not likely to cause confusion with the registered mark GRAND HOTEL for hotel, restaurant, and convention services [HOTEL disclaimed]. Dictionary definitions, third-party registrations, and Internet evidence showed the word GRAND to be a weak formative in the hotel field, leading the Board to conclude that the addition of NYC to GRAND HOTEL was enough to distinguish the marks. In re Hartz Hotel Services, Inc., 102 USPQ2d 1150 (TTAB 2012) [precedential].

Because the cited mark GRAND HOTEL is registered, the mark is entitled to a presumption of validity under Section 7(b). Therefore GRAND HOTEL cannot be treated as merely descriptive; at most it can be considered as a highly suggestive, laudatory term, as evidenced by third-party registrations, third-party use, and dictionary definitions.

Applicant submitted copies of five registrations for marks, owned by different entities, that include the term "Grand Hotel" or "Grande Hotel" for hotel services: THE GRAND HOTEL AT MOUNTAINEER, THE SOUTH'S GRAND HOTEL, ANCHORAGE GRAND HOTEL & Design, LOUISVILLE'S GRAND HOTEL, and FORT LAUDERDALE GRANDE HOTEL & YACHT CLUB. A private investigator confirmed the use of "Grand/Grande Hotel" marks in seven locations (including Geiser Grand Hotel, Wilshire Grand Hotel, and Bellissimo Grande Hotel), and Applicant submitted website pages for 10 "Grand Hotel" locations (including The Grand Hotel Minneapolis, The Grand Hotel Ocean City, North Conway Grand Hotel, Pensacola Grand Hotel, and Jerome Grand Hotel).

The Board relied on Plus Products v. Natural Organics, Inc., 204 USPQ 773 (TTAB 1979), which involved an unsuccessful opposition to the mark NATURE'S PLUS for vitamins in view of PLUS for vitamins. There, the evidence included eight third-party registrations issuing prior to Opposer's registration, and seven issuing after, all for marks including the word PLUS for vitamins or closely related goods. The Board inferred that Opposer was satisfied to register PLUS side-by-side with eight existing PLUS registrations, that the PTO historically registered PLUS marks for vitamins as long as the marks included some difference, and that a number of owners believed that various PLUS marks could co-exist on the register without causing confusion, provided there are differences between the marks. The Board applied the same reasoning here.

The Board found that the strength or weakness of the cited mark is the most important factor. It concluded that the addition of NYC to Applicant's mark is sufficient to distinguish the applied-for mark from that of the cited registration.

Because of the highly suggestive nature of the mark “Grand Hotel,” the proliferation of registered “Grand Hotel” marks and the unregistered uses of “Grand Hotel” marks, the mark “Grand Hotel,” itself, is entitled to only a very narrow scope of protection or exclusivity of use. Further, because of the highly suggestive nature of GRAND HOTEL and the number of third-party GRAND HOTEL marks, we conclude that consumers are able to distinguish between different GRAND HOTEL marks based on small differences in the marks, including the addition of a geographic term.

And so the Board reversed the refusal.

Text Copyright John L. Welch 2012.


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