Thursday, January 03, 2008

"KIDS INN" and "CHILDREN'S INN" Confusingly Similar, At Least According to the TTAB

Vinod Bhandari must have thought he was home free when he convinced the TTAB in 1999 to reverse a Section 2(d) refusal of his application to register the mark KIDS INN for hotel, motel, and restaurant services. The PTO had refused registration on the ground of likelihood of confusion with the registered mark CHILDREN'S INN, owned by NIH, for "lodging services for use of children and their families who are patients at NIH," but the Board found the likelihood of confusion to be de minimis. Unfortunately for Mr. Bhandari, however, when his application was published for opposition, The Children's Inn at NIH opposed. Eight years later, the Board sustained the opposition on Section 2(d) grounds. So ends another valiant pro se tilt at the TTAB windmill. The Children's Inn at NIH v. Bhandari, Opposition No. 91120549 (December 17, 2007) [not precedential].

The Children's Inn at NIH

The Board noted the earlier ex parte decision, but since the decision was marked "not citable as precedent," the panel was "not bound by it." [TTABlog query: Even if the 1999 decision had been dubbed precedential, what difference would that have made? Why would NIH be bound by a decision in an ex parte matter in which it played no part?] In any case, there were "additional facts" of record in this case, namely the "notoriety" of Opposer's mark, that compel a different result.

Meanwhile, Opposer's registration was cancelled in November 2007 for failure to renew. NIH therefore had to rely on its common law rights. Observing that the registration was issued under Section 2(f), the Board found the mark CHILDREN'S INN to be merely descriptive of Opposer's services. However, it ruled that the record established acquired distinctiveness prior to Bhandari's filing date.

As to likelihood of confusion, the Board noted that Applicant's recitation of services was broadly worded, and therefore the Board must assume those services would include "offering lodging to families that travel to Maryland for treatment at NIH." According to the Board, these consumers "would exercise nothing more than ordinary care in making their decisions regarding nearby lodging in connection with a family's visit to NIH." [TTABlog comment: Ordinary care? You have a sick child, you're looking for a place for the family to stay while he or she is at NIH, and you exercise only ordinary care? Preposterous!]

As to the marks, the Board found that KIDS and CHILDREN "convey identical meanings, that is, an inn catering to youngsters," and they therefore engender the same overall commercial impression. These factors outweigh the differences in sound and appearance.

Opposer claimed fame, but the Board was not persuaded "to bestow the exalted status of 'famous' on opposer's mark." However, it found that "opposer's mark possesses a degree of strength with a corresponding scope of protection that encompasses applicant's similar mark for similar services." [TTABlog query: Huh?]

Finally, the Board noted that when opposer's facility is filled to capacity, families are "bumped" and require lodging in the neighborhood of NIH. The Board must assume that Bhandari may open a hotel or motel in close proximity to NIH. Given the notoriety of Opposer's mark, the Board found confusion likely, and it sustained the opposition.

TTABlog comment: I agree with the outcome in the Board's 1999 decision: I think the likelihood of confusion is de minimis. In 1999, Opposer had a registration, but in 2007 it had to rely only on its common law rights. The now-cancelled registration was for the word mark CHILDREN'S INN, but Opposer's common law rights are arguably narrower, in my view, and are limited by the fact that Opposer's sole facility is on the NIH campus: thus the name CHILDREN'S INN AT NIH.

I believe consumers use great care in choosing hospitals for their children. Coupling that factor with the clear differences in spelling and pronunciation of the marks and the limited scope of Opposer's common law rights, I think the opposition should have been dismissed.

Text Copyright John L. Welch 2008.


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