Wednesday, October 31, 2018

Twin TTAB Test: Is ALLEN HOTEL Confusable With ETHAN ALLEN for Lodging Services? Is it Geographically Descriptive?

The USPTO refused registration of ALLEN HOTEL for “hotel accommodation services” [HOTEL disclaimed], finding the mark to be primarily geographically descriptive under Section 2(e)(2), and likely to cause confusion with the registered mark ETHAN ALLEN for, inter alia, inn and motel services. Applicant argued that the commonality of “ALLEN” is an insufficient basis for the Section 2(d) refusal, and that there are many geographical locations named “Allen” besides Allen Street in New York City. How do you think this came out? In re Allen Street Owner LLC, Serial No. 87138386 (October 26, 2018) [not precedential] (Opinion by Judge Cheryl S. Goodman).

Likelihood of Confusion: The examining attorney maintained that ALLEN is the dominant portion of applicant’s mark, since “hotel” is disclaimed, and further that “Allen” could be perceived as a surname in both marks. Applicant asserted that ETHAN ALLEN is a well-known furniture company, and therefore consumers are likely to view ETHAN ALLEN as indicating “a hotel that promotes the Ethan Allen lifestyle” featuring ETHAN ALLEN furniture. The Board took judicial notice that Ethan Allen was an early American patriot, the leader of the “Green Mountain Boys” of Vermont.

The Board found that the marks have different meanings and commercial impressions: "ETHAN ALLEN suggests either the widely recognized historical figure, or a hotel emphasizing the Ethan Allen style aesthetic and containing Ethan Allen furnishings." ALLEN HOTEL, however, would be seen as the given name of surname of someone associated with the hotel. Nothing in the record suggested that ALLEN HOTEL would be perceived as a variant of the ETHAN ALLEN mark.
The Board concluded that the differing connotations and commercial impressions of the marks outweighed any similarities in sound and appearance. And so it reversed the Section 2(d) refusal.

Geographical Descriptiveness: The examining attorney issued this refusal after applicant stated that its services will be rendered between Orchard and Allen Streets in New York City. The first prong of the Section 2(e)(2) test requires that the primary significance of the term at issue be the name of a place generally known to the public.

The examining attorney relied on a map showing that “Allen St.” is a street in New York City, a photo of the street, a Wikipedia entry, and two website excerpts discussing “Allen Street Hotel.” According to Wikipedia, the street was named after Brigadier General William Henry Allen, the youngest person to command a ship in the War of 1812. Applicant did not dispute that Allen Street is a geographic location, but contended that it is not well known. Moreover, “ALLEN” by itself has no independent significance, since there are “at least 25 geographic locations named ‘ALLEN’ in the United States.”

The Board agreed with applicant that there are numerous geographic locations named “Allen,” and found that the record did not support a conclusion that applicant’s location is the most prominently associated with the name “Allen.” The Board, therefore, was not convinced that “Allen” primarily identifies a geographic location in New York City that is “known generally to the American purchasing public.”

In this case, the record reflects that Allen has non-geographic significance and can refer to numerous geographic locations. Additionally, the quantity and nature of the evidence regarding Allen Street in New York City does not establish that it is generally known to United States consumers. We lack persuasive evidence showing, for example, that Allen Street has a well-known historical significance, is a popular tourist destination, or has a widely recognized reputation for some other reason. Rather, we find a similarity to the situation in Societe Generale des Eaux Minerales, 3 USPQ2d at 1452, where the Court stated, “[t]here can be no doubt that the PTO has established that Vittel is in fact the name of a small town in the Voges mountain region of France ... but how many people in this country know that?”

And so the Board reversed the Section 2(e)(2) refusal.

Read comments and post your comment here.

TTABlog comment: Suppose applicant had applied to register THE ALLEN HOTEL. Would that have made the path easier?

Text Copyright John L. Welch 2018.


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