Bass Hotels & Resorts, Inc.v.Innco

Trademark Trial and Appeal Board

Sep 25, 2001

No. 91115090 (T.T.A.B. Sep. 25, 2001)

9/25/01
Hearing: Paper No.
16
August 7, 2001
RLS/JW

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Bass Hotels & Resorts, Inc.

v.

Innco d/b/a Gateway Inn Express
_____

Opposition No. 115,090
to application Serial No. 75/530,706
filed on August 3, 1998
_____

Albert Robin of Robin, Blecker & Daley for Bass Motels &
Resorts, Inc.

Richard R. Johnson of Shook, Hardy & Bacon, L.L.P. for
Innco d/b/a Gateway Inn Express.
______

Before Simms, Cissel, Hairston, Administrative Trademark
Judges.

Opinion by Simms, Administrative Trademark Judge:

Bass Hotels & Resorts, Inc. (opposer), a Delaware
corporation, has opposed the application of Innco d/b/a
Gateway Inn Express (applicant), a Kansas corporation, to
register the mark GATEWAY INN EXPRESS (“INN” disclaimed)
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 115,090
2
for motel services.1 After applicant filed its answer
denying
the allegations in the notice of opposition, a trial was
conducted. Only opposer took testimony and submitted
exhibits, and only opposer filed a brief. An oral
hearing was held which only opposer’s attorney attended.
In the notice of opposition, opposer asserts prior
use of the mark HOLIDAY INN EXPRESS by opposer and by
predecessors and related companies in connection with the
operating and licensing of others to operate a chain of
hotels under that service mark. In its pleading, opposer
claimed ownership of Registration No. 1,651,851, issued
July 23, 1991 (renewal filed) for the mark HOLIDAY INN
EXPRESS (“INN” disclaimed) for hotel and restaurant
services. Opposer asserts that applicant’s mark GATEWAY
INN EXPRESS so resembles opposer’s previously used and
registered mark as to be likely to cause confusion, to
cause mistake, or to deceive.
Opposer took the testimony of Mr. Tom Seddon, its
vice president of marketing for Holiday Inn. Starting in
1990, the HOLIDAY INN EXPRESS hotel chain has grown to
over 1,000 hotels in this country, with a new one opening

1 Application 75/530,706, filed August 3, 1998, based upon
applicant’s allegation of a bona fide intention to use the mark
in commerce.
Opposition No. 115,090
3
about every two business days. Mr. Seddon testified
that, in the trade, the HOLIDAY INN EXPRESS line of
hotels identifies a limited service hotel brand referred
to as “midscale without food and beverage.” In 1998
alone, revenue from the operation of
the HOLIDAY INN EXPRESS hotels was around $1 billion,
with approximately two percent of that sum being spent on
advertising (television, billboards, etc.).
Mr. Seddon testified concerning a tracking survey
which showed that approximately 80 percent of the
traveling public was aware of the HOLIDAY INN EXPRESS
brand of hotels. He also testified that no competitors
use “EXPRESS” in their names and that none uses “INN”
followed by the word “EXPRESS.”
During his testimony, status and title copies of the
pleaded registration, as well as Registration No.
2,207,318, issued December 1, 1998, covering the mark
HOLIDAY INN EXPRESS and design, were introduced. Mr.
Seddon testified that recently the “EXPRESS” portion of
this hotel name has been shown more prominently. Opposer
also operates hotels under the names Holiday Inn, Holiday
Inn Select, Staybridge Suites, Crowne Plaza, and
Intercontinental.
Opposition No. 115,090
4
With respect to the question of likelihood of
confusion, Mr. Seddon testified, at 34 :
A I think that a chain of Gateway Inn
Express hotels would cause confusion among
customers as to whether they were the same
as our Holiday Inn Express brand or affiliated
with our Holiday Inn Express brand. And when
they’re not, it would cause us to potentially
lose sales.

In its brief, opposer argues that its priority has
been established. With regard to the respective
services, opposer contends that applicant’s services are
identified broadly enough in its application to include
opposer’s hotel services. Without any limitation in the
respective registrations and application, opposer argues
that we should presume that the respective services are
offered to the same class of purchasers. It is opposer’s
position that, for moderately priced accommodations,
there is no reason to believe that purchasers would
exercise a higher degree of care in selecting short-term
accommodations.
Because the respective services must be considered
identical or directly competitive, opposer argues that
the degree of similarity of the marks need not be as
great. Here, both marks consist of three words, and the
marks end in the identical words “INN EXPRESS.” Opposer
argues that the marks are similar in appearance and
Opposition No. 115,090
5
meaning and that they are partially identical in sound.
Opposer also contends that its mark is a famous one with
80 percent recognition amongst the traveling public and
revenues in recent years of over $3 billion with millions
of dollars in advertising. Opposer also notes that there
is no evidence of third-party use of the words “INN
EXPRESS” in hotel names. Although opposer has not
pleaded that there is a likelihood of confusion with the
marks of the other hotels which it operates, opposer does
appear to argue in its brief that persons familiar with
opposer’s collection of hotel chains are likely to be
confused as to sponsorship of applicant’s motels.
Finally, opposer asks us to resolve any doubt in its
favor.
Upon careful consideration of this record and of
opposer’s arguments, we conclude that confusion is not
likely. Even though the respective services-—motel
services and hotel services--must be considered closely
related, if not identical, being offered to a similar
class of purchasers, we believe that the respective
marks—-HOLIDAY INN EXPRESS and GATEWAY INN EXPRESS—-are
simply different enough that even the same class of
consumers will distinguish these marks and not attribute
source or sponsorship to the same entity. We reach this
Opposition No. 115,090
6
conclusion even though we agree with opposer that its
asserted mark is famous in the hotel field. However,
even though both marks have two words in common, the
dominant feature of applicant’s mark, the word GATEWAY,
has no similarity in appearance, sound or meaning to
opposer’s mark. We also observe that the purchase of
nightly accommodations is not an inexpensive or casual
purchase (such as a bar of soap or bottle of shampoo, for
example), and that purchasers of hotel and motel services
are likely to exercise some degree of care in the
purchasing decision. Accordingly, when the respective
marks are considered in their entireties, even when
opposer’s mark is afforded the degree of protection it
rightfully deserves, we find that confusion is unlikely.
Decision: The opposition is dismissed with
prejudice.