Trademark Trial and Appeal Board

Jun 28, 2011

No. 91194730 (T.T.A.B. Jun. 28, 2011)

1

jk Mailed: June 28, 2011

Opposition No. 91194730

Sybarite Lifestyle
Management, LLC

v.

Yvonne M. Matherson and
Shira-Michal Dinal

Before Quinn, Bergsman and Wolfson,
Administrative Trademark Judges.

By the Board:
Yvonne M. Matherson and Shira-Michal Dinal (“applicants”)
applied to register the mark SYBARITE (standard characters) for
personal concierge services for others comprising
making requested personal arrangements and reservations,
running errands and providing customer specific
information to meet individual needs, all rendered in
business establishments, office buildings, hotels,
residential complexes and homes

in International Class 45.1

Sybarite Lifestyle Management, LLC (“opposer”) opposes
registration on the grounds of priority and likelihood of
confusion under Trademark Act Section 2(d), asserting common

1 Application Serial No. 77900640, filed December 23, 2009, based
on use of the mark in interstate commerce pursuant to Trademark
Act Section 1(a), asserting a date of first use anywhere of July
1, 2009 and a date of first use in commerce of September 6, 2009.
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
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law use of the mark SYBARITE and ownership of a pending
application for the mark (standard characters) for:
consulting services in the field of hospitality
in International Class 43, and
personal concierge services for others comprising
making requested personal arrangements and reservations,
running errands and providing customer specific
information to meet individual needs, all rendered in
business establishments, office buildings, hotels,
residential complexes and homes

in International Class 45.2
While the notice of opposition does not comprise averments
in numbered paragraphs, each setting forth a single set of
circumstances, see TBMP § 309.03(a)(2) (3d ed. 2011), the
record reflects that applicants denied the salient allegations
in the pleading.
Opposer filed its application asserting a date of first
use of the mark in commerce of May 28, 2003. Opposer amended
the date of first use in commerce in said application to
October 8, 2006, citing an “inadvertent error,” and the
examining attorney accepted the amendment on February 9, 2011.
Thereafter, opposer moved for 1) leave to amend its notice of
opposition under Fed. R. Civ. P. 15(a)(2) so as to reflect the
amended date of first use; and 2) summary judgment under Fed.

2 Application Serial No. 77949360, filed March 3, 2010, based on
use of the mark in interstate commerce pursuant to Trademark Act
Section 1(a), and asserting, for both classes, a date of first
use anywhere of May 28, 2003, and a date of first use in commerce
of October 8, 2006.
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R. Civ. P. 56(a) on its Section 2(d) claim.
Accordingly, this proceeding is before the Board for
consideration of opposer’s two motions. The motions have been
fully briefed.
Opposer’s motion to amend notice of opposition
Amendments to pleadings in inter partes proceedings
before the Board are governed by Fed. R. Civ. P. 15, made
applicable to Board proceedings by operation of Trademark Rule
2.116(a). See Trademark Rule 2.107. After a responsive
pleading has been filed, a party may amend its pleading only
by written consent of every adverse party, or by leave of the
Board. Leave shall be freely given when justice so requires.
See Fed. R. Civ P. 15(a)(2). The Board liberally grants leave
to amend pleadings at any stage of a proceeding when justice
so requires, unless entry of the proposed amendment would
violate settled law or be prejudicial to the rights of the
adverse party or parties. See TBMP § 507.01 (3d ed.
2011). See also Hurley International LLC v. Volta, 82 USPQ2d
1339, 1341 (TTAB 2007).
The crux of opposer’s argument is that “after reviewing
documents collected and produced during discovery, (opposer)
became aware that, for ease of proof, (opposer’s) trademark
application and the Opposition should be amended,” and that
“October 8, 2006 is the date that (opposer) launched its
website, and although (opposer) used the Mark in commerce since
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well before October 8, 2006, issues relating to proof dictate
amending the documents” (opposer’s reply brief, p. 5).
For their part, applicants argue that discovery is closed
and they “will not have had the opportunity to prepare a
defense to the amendment” (applicants’ brief, unnumbered p. 7),
that opposer is acting in bad faith because its original
alleged date of first use could be deemed fraudulent based on
information applicants have from conducting discovery, and that
applicants will be prejudiced because the amendment is “a
change of tactics” (applicants’ unnumbered brief p. 2).
Entry of the proposed amendment does not violate settled
law; rather, it serves the purpose of rendering opposer’s
pleading consistent with and in conformity with the dates-of-
use allegations in its application. The amendment is not
prejudicial to applicants and does not affect their ability to
defend the summary judgment motion. Moreover, any assertions
that opposer acted in bad faith or committed fraud are
premature inasmuch as opposer’s application is in examination
and has not been published for opposition under Trademark Act
Section 2.80.
In view thereof, opposer’s motion to amend is hereby
granted. The amended notice of opposition, filed February 15,
2011, is opposer’s operative pleading in this proceeding.
Opposer’s motion for summary judgment
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Summary judgment is appropriate where the movant shows
that there is no genuine dispute as to any material fact and
that it is entitled to judgment as a matter of law. Fed. R.
Civ. P. 56(a). A party asserting that a fact cannot be or
is genuinely disputed must support its assertion by either
1) citing to particular parts of materials in the record, or
2) showing that the materials cited do not establish the
absence or presence of a genuine dispute, or that an adverse
party cannot produce admissible evidence to support the
fact. Fed. R. Civ. P. 56(c).
As the movant, opposer carries the burden of proof.
See Celotex Corp. v. Catrett, 477 U.S. 317, 323-24 (1986).
In deciding the motion, the function of the Board is not to
try issues of fact, but to determine if there are any
genuine disputes of material fact to be tried. See TBMP §
528.01 (3d ed. 2011), and cases cited therein.
To prevail on summary judgment on its claim, opposer must
establish that there is no genuine dispute that:
1) it has standing to maintain this proceeding;
2) it has priority of use; and
3) contemporaneous use of the parties’ respective marks
on their respective services would be likely to
cause confusion, mistake or to deceive consumers.
See Hornblower & Weeks, Inc. v. Hornblower & Weeks, Inc., 60
USPQ2d 1733, 1735 (TTAB 2001).
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Standing
To prevail on summary judgment, opposer must prove its
standing. To establish standing, an opposer must show that
it has a “real interest” in the outcome of the proceeding;
that is, it must show a direct and personal stake in the
outcome of the opposition. See Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1026 (Fed. Cir. 1999); Jewelers
Vigilance Committee, Inc. v. Ullenberg Corp., 823 F.2d 490,
2 USPQ2d 2021 (Fed. Cir. 1987).
Opposer does not own a subsisting registration upon which
it can rely for purposes of demonstrating priority under
Section 2(d). Cf. King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
However, the parties’ marks are identical and the services in
International Class 45 are identical. Moreover, through the
declaration of its sole owner Scott A. Hale, opposer submitted
a copy of its application for the mark SYBARITE, and the file
thus far in examination, which includes an Office action
wherein the examining attorney advised opposer that the
application will be refused registration under Trademark Act
Section 2(d) if and when applicants’ application matures into a
registration, and a subsequent Office action suspending
opposer’s application pending disposition of applicants’
application (Hale decl. para. 40-42, exh. U-V). See Nextel
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Communications Inc. v. Motorola Inc., 91 USPQ2d 1393, 1400
(TTAB 2009); TBMP § 309.03(b) (3d ed. 2011).
In view of the foregoing, opposer has established its
standing to oppose registration of the involved application,
and has shown that it is not a mere intermeddler.
Priority
We now turn to whether a genuine dispute exists as to
priority of use of the mark SYBARITE for
personal concierge services for others comprising
making requested personal arrangements and reservations,
running errands and providing customer specific
information to meet individual needs, all rendered in
business establishments, office buildings, hotels,
residential complexes and homes.

Pursuant to Trademark Rule 2.122(b)(2), the allegation
in an application for registration of a date of use is not
evidence on behalf of the applicant or registrant; a date of
use of a mark must be established by competent evidence. At
summary judgment, specimens of use are not evidence on
behalf of the applicant.
In the absence of testimony or other proof
demonstrating that the actual use of the mark an applicant
seeks to register is prior to the filing date of its
involved application, the earliest date upon which an
applicant may rely in an opposition proceeding is the filing
date of its involved application. See Syngenta Crop
Protection Inc. v. Bio-Chek LLC, 90 USPQ2d 1112, 1119 (TTAB
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2009); Zirco Corp. v. American Telephone and Telegraph Co.,
21 USPQ2d 1542, 1544 (TTAB 1991).
As discussed below, applicants have failed to present
evidence of actual use of the mark prior to the filing date
of their application. Thus, the earliest date upon which
applicants may rely for priority purposes is December 23,
2009, the filing date of their application.
Inasmuch as opposer’s filing date is after the filing date
of the opposed application, opposer must demonstrate actual use
of the mark SYBARITE for the identified services earlier than
December 23, 2009.
Opposer’s arguments
As noted, opposer submitted the declaration of its sole
owner, Scott A. Hale. Mr. Hale asserts that he formed opposer
company on May 7, 2007, and transferred to opposer company the
entirety of the business, including his interest in the
involved mark (Hale decl., para. 16-17). The declaration
introduces various materials, some of which we summarize here.
Opposer introduced numerous written invoices; opposer’s
declarant states that opposer “retains copies of those invoices
in its book and records within the ordinary course of its
business” (Hale decl., para. 21). Each invoice prominently
bears the wording “SYBARITE” and “Please make check payable to:
Sybarite Lifestyle Management, LLC,” and includes, in a
“Description” column, what Mr. Hale identifies as “a fairly
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detailed description of the concierge-related services for
which a client is billed” (Hale decl., para. 21).
We note that the first set of invoices that are itemized
reflects services dated December 2007 through December 2008
(Hale decl., para. 24, exh. J). The services identified
therein are in the nature of, for example, acquiring goods at
retail or grocery establishments, hardware store purchases,
obtaining supplies, cleaning, painting, plumbing installation,
repairing damaged areas and personal property, obtaining fabric
samples, photo hanging, photo development, laminating, framing,
equipment rental, securing carwash and storage services,
obtaining permits, obtaining meals, and supervision of
subcontractors.
These services fall within the scope of what is defined as
“concierge services.” We note the dictionary definition of
“concierge,” as follows:
• a resident in an apartment building especially in France
who serves as doorkeeper, landlord’s representative, and
janitor
• a usually multilingual hotel staff member who handles
luggage and mail, makes reservations, and arranges tours;
broadly: a person employed (as by a business) to make
arrangements or run errands.3

3 The Merriam-Webster Dictionary, © 2008 by Merriam-Webster,
Inc., http://www.merriam-webster.com/dictionary/concierge. The
Board may take judicial notice of dictionary definitions. See
Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1515
n13 (TTAB 2009); University of Notre Dame du Lac v. J.C. Gourmet
Food Imports Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
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Opposer points out Invoice Number 1025, explaining that
“(T)he short description provided on the invoice reflects the
kind of personal concierge services handled by (opposer)” (Hale
decl., para. 25). This invoice, dated January 20, 2008,
consists of five pages that list various services and the dates
on which they were performed; said list references specific
commercial establishments visited by and activities undertaken
by opposer, as well as the price charged for said services.
The services described in this list include those that fall
under the definition of “concierge services.” In summary, the
services identified on opposer’s invoices are encompassed
within the recitation of services for which applicants seek
registration.
Opposer submitted similar invoices that reflect itemized
services performed in 2009 (Hale decl. para. 26, exh. K), and
in 2010 (Hale decl. para. 27, exh. L).
In determining priority, we look at the total picture
presented by the evidence. As our primary reviewing court has
noted,
[W]hether a particular piece of evidence by itself
establishes prior use is not necessarily dispositive as
to whether a party has established prior use by a
preponderance. Rather, one should look at the evidence
as a whole, as if each piece of evidence were part of a
puzzle which, when fitted together, establishes prior
use.

West Florida Seafood, Inc. v. Jet Restaurants, 31 F.3d 1122,
31 USPQ2d 1660, 1663 (Fed. Cir. 1994). Here, while
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opposer’s invoices that predate applicant’s December 23,
2009 filing date are sufficient to prove opposer’s prior use
of the mark for concierge services, we nonetheless note that
opposer submitted additional evidence that corroborates what
the invoices demonstrate inasmuch as it shows that opposer
was actively promoting the services rendered under the mark.
For example, opposer’s declarant asserts that opposer
prominently displays its mark and descriptions of its concierge
and lifestyle management services on its website
www.sybaritelm.com, that it published and launched said website
on October 8, 2006 (Hale Decl., para. 10), and that the website
“has been fully operational since its launch” (Hale Decl.,
para. 12). Pages from its website prominently display the mark
SYBARITE, and provide descriptions of services offered
thereunder (Hale Decl., para. 10, exh. C).4 For example, the
first paragraph under the “About” link explains as follows:
A UNIQUE APPROACH TO HOSPITALITY. Scott Hale established
Sybarite Lifestyle management in 2003 to bring exceptional
standards, training, and service delivery techniques to
the operation of fine hotels and private residences. To
do so, he has assembled a team of hospitality
professionals rich in experience from all facets of luxury
hotel operations. Their expertise in leading teams to
deliver innovative and intuitive service in elegant
settings makes Sybarite Lifestyle Management unique.

4 Inasmuch as said printouts reflect both the date on which they
were accessed and printed, and their URL source, they are
considered to be self-authenticating and may be admitted into
evidence in the same manner as a printed publication in general
circulation under Trademark Rule 2.122(e). See Safer, Inc. v.
OMS Investments, Inc., 94 USPQ2d 1031, 1039 (TTAB 2010).
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Finally, Mr. Hale asserts in his declaration that with the
exception of one icon entitled “Aspen Housekeeper Academy,” the
substantive information on the website was present at the time
of the website’s launch (Hale decl. para. 15).
Opposer also submitted seven letter-style business
proposals for concierge services, which bear the mark in its
letterhead, and are dated August 26, 2007, June 17, 2008,
January 25, 2009, September 4, 2009, February 6, 2010, March 8,
2010, January 9, 2011 (Hale decl. para. 29, exh. M). Hence,
four such proposals are dated prior to applicants’ December 23,
2009 filing date. For example, the August 26, 2007 proposal
explains in detail the concierge services that opposer offers,
and states, in part,
By selecting the finest aspects of our shared experiences,
we can create a superlative service experience for your
collection of residences. … I would suggest five days of
instruction to ensure sufficient time for use to
thoroughly cover all of the necessary topics. We will
focus on the methods of household management, creating the
service culture that you wish to convey, and how to
successfully plan for each guest who will be utilizing the
residences.

Applicants’ arguments
In opposition to opposer’s claim of priority, applicants
assert,
“…all evidences (sic) submitted in its motion for summary
judgment, prove that the Opposer operated as an estate
manager, domestic staff and hotel consultant. None of the
Opposers evidences (sic) suggest that he operates as a
personal concierge service”

(applicants’ brief, unnumbered p. 4)
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and
“All of the evidences (sic) submitted … supports the
Opposer operating as a hospitality consultant (class 43),
not a personal concierge service (class 45).”

(applicants’ brief, unnumbered p. 6)
Applicants’ first exhibit, two California Secretary of
State documents from 2007 and from 2009, the first of which
indicates that opposer described its type of business as
“consulting for private residences,” appear to have been
submitted to support applicants’ assertion that opposer was not
or has not been registered in California as a personal
concierge company. Applicants’ next exhibits, business
directory third-party websites,5 appear to have been offered to
support the assertion that opposer is not listed by such
entities as operating personal concierge services, and that the
public does not know opposer to be rendering personal concierge
services. Applicants did not submit a declaration attesting to
or otherwise explaining these exhibits.
Applicants’ exhibits are not proof of the information or
statements included therein, and are of limited probative
value. They are nonetheless relevant in determining whether
applicants have negated, or raised a genuine issue with respect
to, opposer’s prior use. We find that applicants’ evidence
fails to raise a genuine dispute with respect to opposer’s

5 As with opposer’s website evidence, these are admissible, and
we consider them for whatever probative value they have. See
Safer, Inc. v. OMS Investments, Inc., 94 USPQ2d at 1039.
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priority. Moreover, applicants have not pointed to particular
materials in the record that show that opposer’s priority is
genuinely disputed.6
In contrast, opposer’s evidence demonstrates its use of
SYBARITE as a service mark in connection with the rendering of
personal concierge services to individual and business clients.
As noted above, such services are in the nature of purchasing
goods, cleaning, painting, securing repairs, obtaining permits,
storing goods, and various other activities addressing the
personal or business-related needs of others. The invoices
that opposer submitted, particularly those referenced above
that are dated 2008, indicate uses in connection with concierge
services that predate applicants’ filing date.
In view of the foregoing, opposer has established prior
use of the mark SYBARITE in connection with its International
Class 45 services, and has demonstrated the absence of genuine
dispute regarding its priority.
Likelihood of confusion

6 We note applicants’ assertion that “Evidence cannot be submitted to
disprove these allegations because Opposer made these new claims
after discovery had already closed” (applicants’ brief, unnumbered
p. 3). To the extent that applicants posit that they were unable to
respond to opposer’s summary judgment motion absent further
discovery, the argument is unavailing. See Trademark Rule
2.127(e)(1); TBMP § 528.06 (3d ed. 2011). Applicants responded to
opposer’s motion, rather than moving for discovery under Fed. R.
Civ. P. 56(d). Cf. Ron Cauldwell Jewelry, Inc. v. Clothestime
Clothes, Inc., 63 USPQ2d 2009 (TTAB 2002) (motion for discovery
denied where nonmovant filed a response to the motion for summary
judgment on the merits).

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Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also,
In re Majestic Distilling Company, Inc., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Our primary
reviewing Court has held that only those du Pont factors
shown to be material or relevant in the particular case and
which have evidence submitted thereon are to be considered.
Olde Tyme Foods, Inc. v. Roundy's, Inc., 961 F.2d 200, 22
USPQ2d 1542, 1544 (Fed. Cir. 1992). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the goods and/or services. See Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The fundamental inquiry mandated by §2(d) goes
to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks”).
In this case, the only evidence relates to the
similarity of the marks and the similarity of the services.
As noted, the parties’ marks are identical, and their
services are identical. Based on this record, we conclude
that there is no genuine dispute that there is a likelihood
of confusion.
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Conclusion
Based on the record on summary judgment, and after
consideration of the parties’ arguments and evidence, the Board
finds that opposer has met its burden of demonstrating that it
has standing, and that there is no genuine dispute that 1) it
used the mark in commerce since at least prior to the earliest
date upon which applicants may rely, and 2) a likelihood of
confusion exists. Thus, opposer has demonstrated that it is
entitled to judgment as a matter of law.
In view thereof, opposer’s motion for summary judgment is
granted. The opposition is sustained on the ground of priority
and likelihood of confusion, and registration to applicants is
refused.