Consumers can distinguish between 'grand hotel' marks based on minor differences

United States of America

In In re Hartz Hotel Services Inc (Serial No 76692673, March 19 2012), in a precedential opinion reversing a trademark examiner’s refusal to register a mark incorporating the terms 'grand hotel', the Trademark Trial and Appeal Board (TTAB) has ruled that the proliferation of registered 'grand hotel' marks, the extensive unregistered uses of 'grand hotel' marks and the highly suggestive nature of 'grand hotel' meant that an existing registration for GRAND HOTEL for “hotel and restaurant services” was entitled to only a very narrow scope of protection or exclusivity of use. Thus, the TTAB concluded, consumers can readily distinguish between different 'grand hotel' marks based on minor differences, including the addition of a geographic term.

Applicant Hartz Hotel Services Inc had filed an intent-to-use application to register the mark GRAND HOTELS NYC for “hotel services”, disclaiming the exclusive right to use the term 'hotels NYC'. The examining attorney initially refused to register the mark on the grounds that it was likely to cause confusion with two registrations owned by a single entity for the mark GRAND HOTEL, one of which was for use in connection with “hotel and restaurant services”.

In reviewing the examiner’s refusal, the TTAB analysed the likelihood of confusion between the marks under the test set forth in In re EI du Pont de Nemours & Co (476 F2d 1357, 177 USPQ 563, 567 (CCPA 1973)), focusing on the following factors:

  • The similarity or dissimilarity and nature of the services described in the application and registration, channels of trade and classes of consumers; and
  • The strength of the registered mark, the number and nature of similar marks in use in connection with similar services, and the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.

The TTAB noted that the services identified were identical in part. This led the TTAB to conclude that the channels of trade and classes of prospective consumers were also the same. Accordingly, this factor weighed in favour of a finding that the applied-for-mark would create a likelihood of confusion.

The bulk of the TTAB’s opinion, however, focused on the strength of the cited registration. The TTAB ultimately concluded that the strength, or rather the weakness, of the cited mark was the most important factor in its analysis. 

The TTAB first found that the mark was a highly suggestive laudatory term, reasoning that the word 'grand', when used in connection with 'hotel', indicates “an impressive, stately, magnificent or first-rate hotel”. The TTAB noted that, despite the descriptive nature of this combination of terms, the fact that the mark was registered meant that it was entitled to a presumption of validity, and the TTAB was obligated to treat the mark as, at worst, highly suggestive.

The TTAB next considered the applicant’s evidence of five additional registrations owned by different entities, as well as two registrations owned by companies related to the applicant, incorporating the term 'grand hotel' or 'grande hotel' for “hotel services” and, in several cases, adding merely a geographically descriptive term (eg, 'Louisville's', 'The South's' and 'Anchorage') to the mark GRAND HOTEL. In light of this evidence, as well as the applicant’s evidence of numerous, unregistered third-party uses of marks incorporating the term 'grand hotel', the TTAB reasoned that these marks were sufficiently distinct from the cited mark so as not to cause consumer confusion. 

The TTAB added that the registrant’s failure to challenge the third-party registrations - each of which was issued after the cited registration - or to police the unregistered uses implied that the registrant had no problem with the registrations or use of such similar marks. The TTAB thus concluded that marks consisting of the term 'grand hotel' in connection with hotel services are entitled to a very narrow scope of protection. As such, the TTAB found, the addition of a laudatory or suggestive term may be sufficient to distinguish such a mark from another similar mark.

As to the applicant’s mark GRAND HOTELS NYC, the TTAB reasoned that, although it differed from the cited mark only to the extent that it included the geographic term 'NYC' and pluralised the word 'hotel', such differences had been found sufficient to distinguish two marks used on identical services in other cases involving extensive third-party use. Accordingly, the TTAB held that the addition of 'NYC' to the applicant’s mark was sufficient to distinguish it from the GRAND HOTEL registration and, therefore, it reversed the examiner’s refusal.

Anthony D Peluso, Arent Fox LLP, Washington DC

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