Bay Shore Development Corporation

Trademark Trial and Appeal Board

Sep 23, 2019

87856813 (T.T.A.B. Sep. 23, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 23, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Bay Shore Development Corporation
_____

Serial No. 87856813

_____

Lucas T. Vande Sande and Thomas J. Vande Sande of
Hall & Vande Sande LLC, for Bay Shore Development Corporation.

Nicholas K. D. Altree, Trademark Examining Attorney, Law Office 107,
J. Leslie Bishop, Managing Attorney.
_____

Before Zervas, Shaw and English,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Bay Shore Development Corporation (“Applicant”) seeks registration on the
Principal Register of the mark

Serial No. 87856813
- 2 -
for “hotel and motel accommodation services” in International Class 43.1 Pursuant to
a requirement by the Examining Attorney, Applicant disclaimed “HOTEL GROUP
OCEAN CITY, MARYLAND 1-800-926-1122.”
The Examining Attorney refused registration pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark is likely to
cause confusion with (i) the composite word and design mark

of Registration No. 2646073,2 and (ii) the typed mark BOARDWALK INN of
Registration No. 2582613,3 both with INN disclaimed and for “hotel services” in
International Class 42.
After the Examining Attorney issued a Final Office Action, Applicant appealed.
We affirm the refusal to register.

1 Application Serial No. 87856813, filed on March 30, 2018 pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), asserting first use and first use in commerce at least as
early as 1999. The application states, “The mark consists of the wording ‘BOARDWALK
HOTEL GROUP OCEAN CITY, MARYLAND 1-800-926-1122’ within a rectangular border
and with a design of ocean waves in between the word ‘BOARDWALK’ and the wording
‘HOTEL GROUP.’”
2 Registered November 5, 2002, renewed.
3 Registered June 18, 2002, renewed. Prior to November 2, 2003, “standard character”
drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard
character mark. TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 807.03(i)
(October 2018).
Serial No. 87856813
- 3 -
Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E. I. DuPont DeNemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“DuPont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services] and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976). We consider each DuPont factor for which there is evidence and
argument. See, e.g., In re Guild Mortgage Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019).
We need only consider Applicant’s involved mark and the cited typed mark. If
likelihood of confusion is found as to the typed mark and its services, it is unnecessary
to consider the cited word and design mark because that mark has additional points
of difference with Applicant’s mark. Conversely, if likelihood of confusion is not found
as to the typed mark and its services, we would not find likelihood of confusion as to
the mark and services in the cited word and design mark. See, e.g., In re Max Capital
Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
Serial No. 87856813
- 4 -
a. The Services, Channels of Trade and Classes of Purchasers
When we consider the relatedness of the services, our analysis is premised on a
comparison of the services as they are set out in the application and the cited
registration. Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177 USPQ 76,
77 (CCPA 1973) (“Trademark cases involving the issue of likelihood of confusion must
be decided on the basis of the respective descriptions of goods”). See also In re Dixie
Rests., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997) (quoting Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1816 (Fed. Cir. 1987) (“Likelihood of confusion must be determined based on an
analysis of the mark applied to the … services recited in applicant’s application vis-
à-vis the … services recited in [a] … registration, rather than what the evidence
shows the … services to be”)). We do not read limitations into the recitation of
services. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)
(“There is no specific limitation and nothing in the inherent nature of Squirtco’s mark
or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks.
The Board, thus, improperly read limitations into the registration”).
Applicant’s and Registrant’s identifications of services overlap; both encompass
hotel services. While “hotel accommodation services” is not identical to “hotel
services,” we find that “hotel accommodation services” encompasses “hotel services.”4

4 “Accommodation” is defined as “lodging, food, and services or traveling space and related
services” in the online version of Merriam-Webster Dictionary (https://www.merriam-
webster.com/dictionary/accommodation, accessed September 20, 2019). We take judicial
notice of this definition. The Board may take judicial notice of dictionary definitions, Univ. of
Notre Dame du Lac v. J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703
Serial No. 87856813
- 5 -
Applicant’s argument that it is engaged only in arranging hotel accommodations for
a group of hotels, which in turn bear their own marks is not persuasive.5 Applicant’s
recitation of services is not so limited but encompasses hotel services. The issue of
registrability must be determined on the basis of the services as identified in the
application and registration, and not on how the marks are actually used. See Dixie
Rests., 41 USPQ2d at 1531 (Fed. Cir. 1997); Canadian Imperial, 1 USPQ2d at 1815.
Because the services are in part identical, we must also presume that the services
would travel in the same channels of trade normal for those services and to all classes
of prospective purchasers for those services. See In re Viterra Inc., 671 F.3d 1358, 101
USPQ2d 1905, 1908 (Fed. Cir. 2012) (legally identical goods are presumed to travel
in same channels of trade to same class of purchasers); In re Yawata Iron & Steel Co.,
403 F.2d 752, 159 USPQ 721, 723 (CCPA 1968) (where there are legally identical
goods, the channels of trade and classes of purchasers are considered to be the same);
In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB 2018) (“Because the
services described in the application and the cited registration are identical, we
presume that the channels of trade and classes of purchasers are the same”), aff’d,
No. 18–2236 (Fed. Cir. Sept. 13, 2019). Such purchasers include members of the
general public.

F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983), including online dictionaries that exist in printed
format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).
5 Applicant notes it specimen of use submitted with its original application which it states
shows “two Howard Johnson establishments and a Days Inn establishment, all located on
the boardwalk in Ocean City, Maryland.” Applicant’s brief at 13, 4 TTABVUE 20.
Serial No. 87856813
- 6 -
In view of the foregoing, the DuPont factors regarding the services, trade channels
and classes of purchasers weigh in favor of a finding of likelihood of confusion.
b. Alleged Weakness of Registered Mark
The sixth DuPont factor requires us to consider the number and nature of similar
marks in use on similar services. DuPont, 177 USPQ at 567; Primrose Ret. Cmtys.,
LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030, 1033 (TTAB 2016).
In support of its arguments that the common element BOARDWALK is
“descriptive” and is used frequently in connection with hotel services,6 that “no
meaningful strength can be attributed to the ‘BOARDWALK’ component of the cited
registrations,”7 and that the mark “fall[s] on the ‘weak’ end of the strength
spectrum,”8 Applicant submitted:
● webpages from the following businesses:
- Boardwalk Inn and Suites, Daytona Beach, Florida
- Disney’s Boardwalk Inn, Lake Buana Vista, Florida
- The Boardwalk Inn, South Carolina
- Boardwalk Inn, Rumford, Maine
- Boardwalk Inn, Hampton Beach, New Hampshire
- Boardwalk Inn Hotel, St. Ignace, Michigan;9
● the declaration of Denise Nappi, paralegal for Applicant’s
attorney who indicates that she contacted each business

6 4 TTABVUE 16-17.
7 Id. at 15.
8 Id. at 19.
9 August 27, 2018 Resp. to Office Action, TSDR 18-31. References to the application record
are to the Trademark Status and Document Retrieval (“TSDR”) system.
Serial No. 87856813
- 7 -
noted above to verify that it is in operation and not related
to Applicant;10 and
● the definition of “boardwalk” from The American
Heritage Dictionary of the English Language (4th ed.)
which defines the term as “a promenade, especially of
planks, along a beach or waterfront.”11
We consider both inherent strength, based on the nature of the mark itself, and
commercial strength or recognition. In re Chippendales USA Inc., 622 F.3d 1346, 96
USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is measured both by its
conceptual strength (distinctiveness) and its marketplace strength (secondary
meaning).”). If a mark, or an element of a mark, is used extensively in commerce by
a number of third parties, that could undermine its commercial strength, as the
consuming public may have become familiar with a multiplicity of the same or similar
marks, and can distinguish them based on minor differences. Juice Generation, Inc.
v. GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). “Evidence
of third-party use of similar marks on similar goods [or services] is relevant to show
that a mark is relatively weak and entitled to only a narrow scope of protection.” Palm
Bay, 73 USPQ2d at 1693, quoted in Jack Wolfskin Ausrustung Fur Draussen GmbH
& Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129,
1136 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 982 (2016). “The weaker [a registrant’s]
mark, the closer an applicant’s mark can come without causing a likelihood of

10 Id. at TSDR 32-35.
11 Id. at TSDR 15-17.
Serial No. 87856813
- 8 -
confusion and thereby invading what amounts to its comparatively narrower range
of protection.” Juice Generation, 115 USPQ2d at 1674.12
Even if we assume the six third-party hotels using BOARDWALK INN are
unrelated to one another or to Registrant, this does not constitute the amount and
type of evidence whereby we can conclude that such widespread use exists that
consumers have become conditioned to distinguishing BOARDWALK INN marks
based on differences that would otherwise be considered less significant. See In re
i.am.symbolic, 866 F.3d 1315, 123 USPQ2d 1744, 1751 (Fed. Cir. 2017) (evidence of
third-party use “falls short of the ‘ubiquitous’ or ‘considerable’ use of the mark
components present in [applicant’s] cited cases”); cf. Jack Wolfskin, 116 USPQ2d at
1136 (discussing “voluminous evidence” of registration and use of paw print design
elements); Juice Generation, 115 USPQ2d at 1674 & n.1 (referring to evidence of “a
considerable number” of third-party marks). Six hotels is a small number of hotels
given the ubiquity of hotels in this country.
With respect to the conceptual weakness of BOARDWALK, we agree that the term
may be understood by consumers as suggesting “a promenade, especially of planks,
along a beach or waterfront.” We disagree with Applicant’s assertion, however, that

12 If there is evidence that a mark, or an element of a mark, is commonly adopted by many
different registrants, which may indicate that the common element has some significance
that undermines its conceptual strength as an indicator of a single source. Jack Wolfskin,
116 USPQ2d at 1136.

Serial No. 87856813
- 9 -
BOARDWALK is descriptive.13 The cited registration for the typed mark is on the
Principal Register without a claim of acquired distinctiveness and thus is entitled to
a presumption of validity that cannot be challenged via this ex parte proceeding.
15 U.S.C. § 1057(b). We also keep in mind that other than the two cited registrations,
the record does not demonstrate any other registrations for marks with the term
BOARDWALK. Cf., i.am.symbolic, 123 USPQ2d at 1751 (registrations are not
evidence of use of the marks in the marketplace, but may be relevant to show whether
a term is descriptive, suggestive, or so common that the public will look to other
elements to distinguish the source of the goods or services).
Ultimately, the record supports a finding that the term BOARDWALK is not
entirely unique in connection with hotels and the term may be understood as
suggestive. However, the evidence is not overwhelming in this regard, and we find
that Applicant has not established that the cited mark is very weak so that its scope
of protection is “severely limited.”14 Rather, we find the registered mark’s scope of
protection is less than that which would be accorded to a very strong and arbitrary
mark.
c. The Marks
We compare Applicant’s composite BOARDWALK HOTEL GROUP OCEAN
CITY, MARYLAND 1-800-926-1122 mark and Registrant’s BOARDWALK INN mark

13 Applicant states, “The marks only share the common element ‘Boardwalk’, which besides
from being descriptive, is shown to be used frequently in connection with hotel services.”
4 TTABVUE 18.
14 4 TTABVUE 19.
Serial No. 87856813
- 10 -
“in their entireties as to appearance, sound, connotation and commercial impression.”
Palm Bay, 73 USPQ2d at 1691 (quoting DuPont, 177 USPQ at 567). When comparing
marks, the test is not whether the marks can be distinguished in a side-by-side
comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the source of the services offered
under the respective marks is likely to result. Midwestern Pet Foods, Inc. v. Societe
des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012).
“Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re
1st USA Realty Prof’ls, Inc., 84 USPQ2d 1581, 1586 (TTAB 2007)). Further, marks
“‘must be considered ... in light of the fallibility of memory ....”’ In re St. Helena Hosp.,
774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting San Fernando Elec.
Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)).
The proper focus is on the recollection of the average customer, who retains a general
rather than specific impression of the marks. Winnebago Indus., Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106, 108 (TTAB 1975).
We may not dissect the involved marks when comparing the marks but must
consider them in their entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ
749, 750-51 (Fed. Cir. 1985). Nonetheless, there is nothing improper in stating that,
for rational reasons, more or less weight has been given to a particular feature of a
mark, provided the ultimate conclusion rests on a consideration of the marks in their
Serial No. 87856813
- 11 -
entireties. Stone Lion Capital Partners, LP v. Lion Capital LLP, 76 F.3d 1317, 110
USPQ2d 1157, 1161 (Fed. Cir. 2014). For instance, merely descriptive matter that is
disclaimed has been accorded subordinate status relative to the more distinctive
portions of a mark. Nat’l Data, 224 USPQ at 751 (“That a particular feature is
descriptive . . . with respect to the relevant goods or services is one commonly accepted
rationale for giving less weight to a portion of the mark.”). It also has been recognized
that where a mark consists of a word and a design, the words generally play a
dominant role. Viterra, 101 USPQ2d at 1908 (“In the case of a composite mark
containing both words and a design, ‘the verbal portion of the mark is the one most
likely to indicate the origin of the goods to which it is affixed.”’) (quoting CBS Inc. v.
Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)); In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 2001) (“[W]ords are normally
accorded greater weight because they would be used by purchasers to request the
goods.”).
Moreover, in cases such as this, where Applicant’s services overlap with
Registrant’s services, the degree of similarity between the marks which is required
to support a finding of likelihood of confusion is less than it would be if the services
were not identical. Viterra, 101 USPQ2d at 1908 (quoting Century 21 Real Estate
Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992)).
Turning first to the design elements in Applicant’s mark, we find them to be less
important than the wording in forming the commercial impression of Applicant’s
Serial No. 87856813
- 12 -
mark. The design elements – including the wave design - are background elements
or serve to separate wording.
With regard to the wording and number in Applicant’s mark, HOTEL GROUP
OCEAN CITY, MARYLAND 1-800-926-1122 has been disclaimed. Applicant
disclaimed these terms pursuant to a requirement by the Examining Attorney,
thereby conceding that the terms are merely descriptive. See In re Pollio Dairy Prods.
Corp., 8 USPQ2d 2012, 2014 n.4 (TTAB 1988) (“By its disclaimer of the word LITE,
applicant has conceded that the term is merely descriptive as used in connection with
applicant’s goods.”) (citing State Oil Ref. Corp. v. Quaker Oil Corp., 161 USPQ 547
(TTAB 1969), aff’d, 453 F.2d 1296, 172 USPQ 361 (CCPA 1972)). Descriptive matter
typically is less significant or less dominant when comparing marks. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir.
2000) (quoting Nat’l Data, 224 USPQ at 752 (the “descriptive component of a mark
may be given little weight in reaching a conclusion on likelihood of confusion”)).
We find that BOARDWALK is the dominant term in Applicant’s mark. It is at the
initial position in the mark. See Palm Bay, 73 USPQ2d at 1692 (“Veuve” is the most
prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in
the mark and the first word to appear on the label). It is also in letters that are larger
than the other terms and number in the mark, and, as explained above, is a
suggestive term. BOARDWALK hence is stronger as a source identifier than the
disclaimed, merely descriptive terms HOTEL GROUP OCEAN CITY, MARYLAND
Serial No. 87856813
- 13 -
1-800-926-1122. The number is clearly a toll-free phone number, and would
immediately be perceived as such by consumers.
BOARDWALK is also the dominant term in Registrant’s BOARDWALK INN
mark. The term INN is a highly descriptive or generic term for Registrant’s services
and Registrant has disclaimed INN.
Because BOARDWALK is the dominant term in each mark and is followed by
merely descriptive or generic matter, we find the marks to be similar in meaning,
appearance, sound and commercial impression. In arriving at our conclusion, we have
considered the marks as a whole and weigh components consistent with Federal
Circuit precedent. See Stone Lion 110 USPQ2d at 1161. We are not persuaded by
Applicant’s argument that HOTEL GROUP in Applicant’s mark “reinforces that the
mark does not refer to a hotel establishment” and that the “differing commercial
impressions created by usage of ‘HOTEL GROUP’ on one hand, and ‘INN’ on the
other, cannot be expected to go unnoticed by consumers making travel plans and thus
diminish a likelihood of confusion.”15 The issue is not likelihood of confusion between
particular services, but likelihood of confusion as to the source or sponsorship of those
services. Majestic Distilling, 65 USPQ2d at 1205; In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1689 (Fed. Cir. 1993). The shared term BOARDWALK suggests
some connection or affiliation between the providers of the hotel and hotel
accommodation services through the inclusion of the dominant term BOARDWALK
in both marks.

15 4 TTABVUE 26-27.
Serial No. 87856813
- 14 -
In arriving at our conclusion we have considered Applicant’s arguments regarding
Stouffer Corp. v. Health Valley Natural Foods Inc., 1 USPQ2d 1900, 1903 (TTAB
1986) (no likelihood of confusion between LEAN LIVING and LEAN CUISINE;
“LEAN, is, at least, highly suggestive of both parties’ goods.”). Applicant’s evidence
in this case does not establish that BOARDWALK is at least highly suggestive of
Registrant’s services.
The DuPont factor regarding the similarity of the marks thus favors a finding of
likelihood of confusion.
d. Purchaser Care and Sophistication
Applicant argues that “Purchasers of accommodations are not motivated to
consider without great care the source, origin and location of the services being
offered.”16 We see no reason to deem purchasers of hotel and motel accommodation
services as careful and sophisticated. Because there are no limitations in the
identifications of services directed to cost or purchasers, the standard of care for such
services is that of the least sophisticated potential purchaser. In re FCA US LLC, 126
USPQ2d 1214, 1222 (TTAB 2018) (citing Stone Lion, 110 USPQ2d at 1163). Such
purchasers may include road travelers who reach a point in the day when they need
a hotel or motel for the night. They are not “[t]he ordinary purchaser of
accommodations [who] is spending a not insubstantial amount of money to stay in a
certain geographic area and a specific location based upon a pre-determined travel
plan or agenda with, at a bare minimum, some advanced stage of knowledge, research

16 4 TTABVUE 24.
Serial No. 87856813
- 15 -
and planning.”17 Thus, Applicant’s argument is unpersuasive, and we consider the
DuPont factor regarding conditions of purchase and purchaser sophistication as
neutral.
e. Conclusion
We have considered all evidence and arguments bearing on the relevant DuPont
factors. We conclude that Applicant’s mark for overlapping services, offered to the
same class of consumers in the same trade channels, is likely to cause confusion as to
the source of the services. We reach this ultimate conclusion with the understanding
that the registered mark’s scope of protection is not as wide as that of a strong and
arbitrary mark; but it is well-recognized that even weak marks are entitled to
protection against a mark that is substantially similar and used on identical services,
as here. See King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d. 1400, 182 USPQ
108, 109 (CCPA 1974).
Decision: The refusal to register is affirmed.

17 4 TTABVUE 24.