CSX IP, Inc. and CSX Hotels, Inc.v.Greenbriar Corp.

Trademark Trial and Appeal Board

Aug 25, 2000

No. 91109424 (T.T.A.B. Aug. 25, 2000)

Paper No. 36
PTH
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB 8/25/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
CSX IP, Inc. and CSX Hotels, Inc.
v.
Grenbriar Corporation
_____
Opposition No. 109,424
to application Serial No. 75/140,107
filed on July 24, 1996
_____
Richard L. Kirkpatrick and Laura C. Gustafson of Pillsbury
Madison & Sutro LLP for CSX IP, Inc. and CSX Hotels, Inc.
Gregory M. Howison of Thompson & Howison LLP for Greenbriar
Corporation.
______
Before Seeherman, Hairston and Bottorff, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
Greenbriar Corporation has filed an application to
register the mark depicted below
Opposition No. 109,424
2
for services which were subsequently described as “assisted
living centers, namely, residential care facilities
providing personal assistance with the activities of daily
living including special health care services in the nature
of dementia care.”1
Registration has been opposed by CSX IP, Inc. and CSX
Hotels, Inc. under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when used in connection with
applicant’s services, so resembles opposers’ previously used
and registered marks set forth below, as to be likely to
cause confusion:
(a) THE GREENBRIER for resort hotel and
restaurant services;2
(b) GREENBRIER in the stylized form below
for resort hotel services;3
(c) “G” in the stylized form below

1 Serial No. 75/140,107 filed July 24, 1996, alleging dates of
first use of February 1996. The words “Corporation” and “The
Assisted Living Company” have been disclaimed apart from the mark
as shown.
2 Registration No. 1,776,855 issued June 15, 1993; Sections 8 &
15 affidavit accepted.
3 Registration No. 1,482,046 issued March 22, 1988; Sections 8 &
15 affidavit accepted.
Opposition No. 109,424
3
for resort hotel services;4
(d) THE GREENBRIER for diagnostic health care
services;5 and
(e) THE GREENBRIER for conducting exercise
classes and providing exercise facilities,
and health spa and mineral bath services.6
Applicant, in its answer, denied the salient
allegations of the opposition. The case has been fully
briefed, but no oral hearing was requested.
We must first address an evidentiary matter. Applicant
submitted, under notice of reliance, Internet website
printouts of companies purportedly using “Greenbrier” or
“Greenbriar” and printouts of various domain name
registrations consisting of “Greenbrier” or “Greenbriar”
obtained from the Internet website of Network Solutions,
Inc., a domain name registry. Accompanying these materials
are the affidavits of Eric Jorgensen, an employee of
applicant’s law firm, who retrieved the information.
Applicant contends that these materials indicate that
GREENBRIER is a weak mark and entitled to a narrow scope of
protection. Opposers, in their brief on the case, have
objected to the materials on the ground that they are not

4 Registration No. 1,482,047 issued March 22, 1988; Sections 8 &
15 affidavit accepted.
5 Registration No. 1,619,169 issued October 23, 1990; Sections 8
& 15 affidavit accepted.
6 Registration No. 1,634,426 issued February 5, 1991; Sections 8
& 15 affidavit accepted.
Opposition No. 109,424
4
printed publications, and thus, not properly submitted by
way of notice of reliance.7 It is well settled that
Internet website printouts are not admissible under
Trademark Rule 2.122(e) because they are not self-
authenticating as contemplated by the rule and they are not
generally considered printed publications. See Raccioppi v.
Apogee, Inc., 47 USPQ2d 1368, 1370 (TTAB 1998). Similarly,
the printouts of domain names is inadmissible under
Trademark Rule 2.122(e). In view thereof, opposers’
objection to these materials is well taken, and we have not
considered them in reaching our decision. We should point
out that, in any event, the Internet website printouts would
not have been particularly probative because the vast
majority cover goods and/or services unrelated to those
involved herein and they are not evidence that the purported
marks are in use. In addition, the printouts of domain
names would not have been particularly probative inasmuch as
we do not know if such names are being used as trademarks,
the extent of any such use, and the goods or services in
connection with which the domain names are used. In short,

7 We note applicant’s contention that opposers’ objection is
untimely. Section 718.02(c) of the Trademark Trial and Appeal
Board Manual of Procedure states that an objection to a notice of
reliance on substantive grounds normally should be raised in the
objecting party’s brief on the case, unless the ground for
objection is one which could be cured promptly by motion to
strike. In this case, opposers’ objection could not have been
cured promptly because it would have required the taking of a
testimony deposition to make these materials of record. In view
Opposition No. 109,424
5
even if these materials were admissible, their probative
value would be minimal, at best.
Thus, the record consists of the pleadings; the file
of the opposed application; and the trial testimony, with
related exhibits, of opposers’ witnesses James A. Searle,
Jr. and Madalyn D. Rofer-Choate. In addition, opposers
submitted under notice of reliance, copies of the pleaded
registrations as well as other registrations owned by them;
copies of third-party registrations; a copy of applicant’s
trademark search report;8 excerpts from printed
publications; applicant’s responses to certain of opposers’
requests for admissions and interrogatories; and portions of
discovery deposition testimony. Opposers also submitted,
pursuant to a stipulation, excerpts from the website of
Marriott International, Inc., copies of registrations owned
by Marriott and copies of that company’s 1997 and 1998
annual reports. Applicant submitted, under notice of
reliance, opposers’ responses to certain of applicant’s
interrogatories; portions of discovery deposition testimony,
and excerpts from a printed publication.
The record shows that CSX IP, Inc. and CSX Hotels, Inc., are
related companies, with CSX IP, Inc. being the owner of the

thereof, applicant’s contention that opposers’ objection to the
materials is untimely is not well taken.
8 A trademark search report is generally not admissible by notice
of reliance. However, we have considered the search report in
Opposition No. 109,424
6
above pleaded registrations. According to the testimony,
THE GREENBRIER was first used for resort hotel services in
1913. THE GREENBRIER resort hotel is located on 6500 acres
in White Sulphur Springs, West Virginia and features not
only the hotel, but The Greenbrier Clinic, spas and mineral
baths, and a private residential development known as The
Greenbrier Village. THE GREENBRIER resort hotel offers
guests numerous activities, including golf, tennis,
swimming, exercise facilities and other entertainment and
outdoor activities. It also provides on-site dining and a
variety of accommodations including guest rooms, suites,
guest houses and estate houses.
Every year for the past thirty years approximately
90,000 guests have visited THE GREENBRIER. The resort hotel
has received every conceivable award in the resort hotel
industry. At the time of trial (1997), THE GREENBRIER had
won the Five Star rating from the Mobil Travel Guide every
year for thirty-eight years and the Five Diamond rating from
the American Automobile Association every year for twenty
years.
In 1990, THE GREENBRIER was designated a National
Historic Landmark, in recognition of its being one of the
most historic places in the United States. We note, in this
regard, that during World War II the resort served first as

this case because applicant did not object thereto, but rather
Opposition No. 109,424
7
the home of a number of foreign diplomats and later it was
transformed into an Army hospital. During the Cold War, a
secret bunker was constructed at the site which was designed
to house members of Congress in the case of a nuclear
attack.
THE GREENBRIER resort has been associated with health
and wellness from its inception, when people came to White
Sulphur Springs to bathe in and drink the mineral water.
The Greenbrier Clinic, which began operations in 1948, is
located on THE GREENBRIER property and offers preventative
healthcare and medical services. The clinic has served over
70,000 individuals since 1948 and currently serves
approximately 5,000 individuals each year. The clinic has
eight internists, two radiologists and a staff of seventy.
It conducts diagnostic exams and tests, including an
assessment of an individual’s general health status,
evaluation of current symptoms and guidelines for healthier
living. The clinic also assists individuals in developing
preventative health programs, including providing
nutritional counseling and assisting the individual in
developing a personally tailored exercise program. A
significant portion of clinic patients are older, and are
evaluated for osteoporosis, Alzheimer’s and other age-
related illnesses.

treated it as of record.
Opposition No. 109,424
8
The Greenbrier Village is a private residential
community located on THE GREENBRIER property. Most of the
residents are former guests of THE GREENBRIER or knew of its
reputation. The community opened in 1975 and consists of 38
townhouse units and 27 single-family lots, some of which
have individual homes located thereon.
Opposer CSX Hotels, Inc. advertises the services
bearing THE GREENBRIER mark through its website; The
Greenbrier Magazine; brochures; national publications;
including Town & Country, Conde Naste Traveler, Golf World,
Food & Wine, and Bon Appetit; newspapers, including The Wall
Street Journal; and travel directories. Opposers’ resort
hotel has been the subject of extensive press coverage,
including nationally televised programming in the United
States and abroad. In 1994 NBC’s “Dateline” broadcast a
story on the Cold War bunker facilities located at THE
GREENBRIER. In addition, several major sporting events at
THE GREENBRIER have been nationally televised.
Opposers primarily use THE GREENBRIER mark in a script
form with a prominent “G.” The mark is also used with a
floral design as depicted below:
Opposition No. 109,424
9
Opposers presently license the use of THE GREENBRIER
mark for a spa in Savannah, Georgia and a resort in Japan.
In addition, opposers sell a wide variety of collateral
merchandise, including wine, golf clubs, mineral water, and
clothing under THE GREENBRIER mark.
Opposer’s sales and advertising figures have been made
of record under seal. A review of the documents relative
thereto shows large numbers in both categories.
Customers of opposers’ services come from throughout
the United States and abroad. Sixty percent of the guest
population belong to group, corporation or association
events. A significant portion of the guest population is in
the older age category and many are families.
Applicant Greenbriar Corporation is in the business of
operating assisted living centers. These centers are
designed for persons generally around 80 years old who are
able to manage most of their daily activities, but
occasionally need help with dressing, bathing, or medication
reminders. Applicant has around fifty such centers and they
are primarily located in towns with a population of 30,000
or less.
Applicant was previously known as Medical Resource
Companies of America and changed its name to Greenbriar
Opposition No. 109,424
10
Corporation on March 26, 1996. James Gilley, applicant’s
president and chief executive officer, testified that the
name was changed because it did not properly identify the
direction in which the company was moving. According to the
testimony of Mr. Gilley, a number of names were evaluated
and he liked the name Greenbriar Corporation best. At the
time of selecting the name, Mr. Gilley was well aware of THE
GREENBRIER resort and its facilities. He testified that he
and his family had been to THE GREENBRIER resort for thirty-
two years in a row; it was a family tradition.
As indicated above, opposers made of record status and
title copies of the pleaded registrations. Thus, there is
no issue with respect to opposers’ priority of their
registered marks. King Candy Co., Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
We turn our attention to the issue of likelihood of
confusion.9 Our determination under Section 2(d) of the
Trademark Act is based on an analysis of all of the
probative facts in evidence that are relevant to the factors
bearing on the likelihood of confusion issue. In re E. I.

9 As indicated above, opposers pleaded ownership of a
registration for the mark THE GREENBRIER for “conducting exercise
classes and providing exercise facilities, and health spa and
mineral bath services.” In addition, opposers pleaded ownership
of a registration for a mark consisting of a stylized letter “G”
for “resort hotel services.” Opposers did not focus on either of
these registrations in their brief, and therefore, we have not
considered the issue of likelihood of confusion with respect to
either of these registrations.
Opposition No. 109,424
11
duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). The factors deemed pertinent in this proceeding are
Opposition No. 109,424
12
discussed below.
Turning first to a consideration of the parties’ marks,
we find that opposers’ marks GREENBRIER, THE GREENBRIER, and
THE GREENBRIER in stylized lettering and applicant’s mark
GREENBRIAR CORPORATION . . . THE ASSISTED LIVING COMPANY and
design create similar commercial impressions.
In comparing the marks, we recognize that the
descriptive (and disclaimed) words “CORPORATION” and “THE
ASSISTED LIVING COMPANY” in applicant’s mark cannot be
ignored. See Giant Food, Inc. v National Food Service,
Inc., 710 F.2d 1565, 218 USPQ 390 (Fed. Cir. 1993).
However, although we have resolved the issue of likelihood
of confusion by a consideration of the marks in their
entireties, there is nothing improper in giving more weight,
for rational reasons, to a particular feature of a mark.
See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985). In this case, we have given more weight
to the GREENBRIAR portion of applicant’s mark, which is
substantially similar to opposers’ GREENBRIER marks. This
is so, not only because of the descriptive nature of the
words “CORPORATION” and “THE ASSISTED LIVING COMPANY,” but
also because these words are depicted in much smaller size
than the word GREENBRIER in applicant’s mark. Further, it
is often the first part of a mark which is most likely to be
Opposition No. 109,424
13
impressed upon the mind of a purchaser and remembered, and
we are of the opinion that GREENBRIAR would be likely to be
used to refer to applicant’s services. See Presto Products
Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB
1988); and Mine Safety Appliances Co. v. Management Science
America, Inc., 212 USPQ 105, 108 (TTAB 1987). We note, in
this regard, the following examples in applicant’s specimen
brochure wherein it uses simply “Greenbriar.”
Greenbriar serves more than 1,200 senior
residents in 17 residences in six states-
California, Idaho . . .
A typical Greenbriar resident’s profile . . .
Often, those with Alzheimer’s who are in
nursing homes or at home with 24-hour nursing
care would be better served by living in a
residential setting designed to meet their
special needs—-the care the Greenbriar
residences provide.
The strength of opposers’ GREENBRIER marks is a
critical du Pont factor in opposers’ favor in this case.
Our principal reviewing court, the Court of Appeals for the
Federal Circuit, recently reaffirmed the importance that
fame plays in determining likelihood of confusion. Recot,
Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894 (Fed.
Cir. 2000). [“When a famous mark is at issue, a competitor
must pause to consider carefully whether the fame of the
mark, accorded its full weight, casts a ‘long shadow which
competitors must avoid.’”]. In this case, the record
clearly establishes the fame of the GREENBRIER marks in the
Opposition No. 109,424
14
resort hotel field. Opposers’ marks have been the subject
of extensive exposure in the marketplace. The record shows
impressive revenue figures and significant promotional
expenditures.
The fame of opposers’ marks is not diminished by the
alleged evidence of third-party usage in applicant’s search
report. Federal and state registrations are not evidence of
the use of the marks listed therein. Also, company listings
taken from business directories, which are unlike
advertisements, are not evidence of use. See Broadway
Chicken Inc., 38 USPQ2d 1559, 1565 (TTAB 1996). Moreover,
we note that the vast majority of the registrations and
company listings cover services which are different from the
services involved herein.
Another factor that bears upon our determination is the
circumstances surrounding the applicant’s adoption of its
mark. James Gilley, applicant’s president and chief
executive officer, testified that he was well aware of THE
GREENBRIER resort at the time of adoption of applicant’s
mark. He and his family had visited the resort for over
thirty years.
A party which knowingly adopts a mark similar to one
used by another for similar goods or services does so at its
peril. In such cases, all doubt on the issue of likelihood
of confusion must be resolved against the newcomer. Nina
Opposition No. 109,424
15
Ricci S.A.R.I. v. E.T.F. Enterprises Inc., 889 F2d 1070, 12
USPQ2d 1901 (Fed. Cir. 1989); Kimberly Clark Corp. v. H.
Douglas Enterprises, Ltd., 774 F.2d 1144, 227 USPQ 541 (Fed.
Cir. 1985); and Gillette Canada Inc. v. Ranir Corp., 23
USPQ2d 1768 (TTAB 1992). Although Mr. Gilley testified that
he did not necessarily think of the GREENBRIER marks when he
selected GREENBRIAR CORPOPRATION . . . THE ASSISTED LIVING
COMPANY and design as applicant’s mark, we agree with
opposer that applicant’s choice of a very similar script for
the letter “G” in the GREENBRIAR portion of its mark, as
well as its use of a similar flower design, sheds some light
on applicant’s intentions.10 See Specialty Brands, Inc. v.
Coffee Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281,
1284 (Fed. Cir. 1984) [“there is . . . no excuse for even
approaching the well-known trademark of a competitor, but to
do so raises ‘but one inference—-that of gaining advantage
from the wide reputation established by [the prior user] in
the services bearing the mark’ . . .”]; and Kenner Parker
Toys Inc., supra at 1458. We have reproduced below
opposers’ stylized mark and applicant’s mark and the
respective flower designs:

10 We note that applicant did not adopt a design which resembles a
greenbrier flower. According to applicant’s witness, the
greenbrier flower is not particularly attractive.
Opposition No. 109,424
16
Opposers’ stylized Applicant’s mark
mark
Opposers’ flower Applicant’s flower
design design
With the foregoing in mind, we turn to a consideration
of the parties’ services. Applicant maintains that its
assisted living centers are specifically different from
opposers’ resort hotel services.
However, in order to support a finding of likelihood of
confusion it is not necessary for the goods or services of
the parties to be similar or competitive, or even that they
move in the same channels of trade. It is sufficient that
the respective goods or services of the parties are related
in some manner, and/or that the conditions and activities
surrounding the marketing of the goods or services are such
that they would be encountered by the same persons under
Opposition No. 109,424
17
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re International Telephone &
Telegraph Corp., 197 USPQ 910, 911 (TTAB 1987).
In this case, opposers have introduced stipulated
evidence showing that two major hotel companies have
expanded into offering living facilities for senior
citizens. Newspaper articles, advertisements and annual
filings before the Securities and Exchange Commission show
that the Marriott Corporation offers both independent and
assisted living facilities and the Hyatt Corporation offers
independent living facilities. In their advertising, both
companies tout their breadth of experience in the hotel
market. Several of the newspaper articles mention that
independent and assisted living facilities are a natural
area of expansion for companies involved in lodging.
Opposers have indicated that this is an area which they too
are considering.
In addition, the record shows that since 1948 opposers
have offered diagnostic health care services under THE
GREENBRIER mark. Applicant offers health care services in
the nature of dementia care under its mark. Also, opposers
have expanded their services to include The Greenbrier
Village residential community. Likewise, applicant’s
assisted living centers are residential communities.
Opposition No. 109,424
18
In view of the foregoing, we find that applicant’s use
of GREENBRIAR CORPORATION . . . THE ASSISTED LIVING COMPANY
and design for assisted living centers, namely, residential
care facilities providing personal assistance with the
activities of daily living including special health care
services in the nature of dementia care is likely to cause
confusion with opposer’s GREENBRIER marks for resort hotel
services and diagnostic health care services. Consumers
familiar with opposers’ resort hotel services and/or
diagnostic health care services offered under the GREENBRIER
marks, upon encountering applicant’s mark for an assisted
living center, may well assume that opposers have expanded
their business to offer these services.
We recognize that persons (or family members acting on
their behalf) who are considering a move to an assisted
living center will exercise care in the selection of such a
center. Thus, the duPont factor of sophisticated/
discriminating purchaser favors applicant. However, when
all the relevant duPont factors are considered herein,
particularly the fame of opposers’ GREENBRIER marks, we find
that, on balance, the relevant factors favor opposers.
Opposition No. 109,424
19
Decision: The opposition is sustained.
E. J. Seeherman
P. T. Hairston
C. M. Bottorff
Administrative Trademark Judges
Trademark Trial and Appeal Board