Fiesta Palms, LLC

Trademark Trial and Appeal Board

Mar 27, 2007

No. 76595049 (T.T.A.B. Mar. 27, 2007)

Mailed:
27 March 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Fiesta Palms, LLC
________

Serial No. 76595049
_______

Lauri S. Thompson for Greenberg Traurig LLP for Fiesta
Palms, LLC.

Scott Sisun, Trademark Examining Attorney, Law Office 110
(Chris A.F. Pedersen, Managing Attorney).
_______

Before Seeherman, Drost, and Mermelstein, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On May 28, 2004, Fiesta Palms, LLC, a Nevada limited
liability company located in Las Vegas, Nevada (applicant),
applied to register the mark CLUB PALMS MVP (in standard
character form) on the Principal Register for “casino
services” in Class 41. The application (No. 76595049)
contains an allegation of a date of first use anywhere and
in commerce of April 1, 2004, and a disclaimer of the word
“Club.” Applicant also claims ownership of several
registrations including Nos. 2,736,238; 2,781,330;
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser No. 76595049
2
2,969,615; and 2,969,616 for such marks as CLUB PALMS, CLUB
PALMS All STAR, and CLUB PALMS HALL OF FAMER for casino,
resort, or entertainment services.
The examining attorney1 has refused to register
applicant’s mark under Section 2(d) of the Trademark Act
(15 U.S.C. § 1052(d)) because of a prior registration for
the mark MVP (in typed or standard character form) for
“casino services offered to preferred customers identified
by special identification cards” in Class 41. The
registration (No. 1,572,506) issued December 19, 1989, and
it was subsequently renewed. The registrant is currently
identified as Harrah’s Operating Company, Inc., a Delaware
Corporation, located in Las Vegas, Nevada.
When the refusal was made final, applicant filed this
appeal.
When the issue is likelihood of confusion, we analyze
the facts as they relate to the relevant factors set out in
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 Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed.
Cir. 2003); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000).

1 The current examining attorney was not the original examining
attorney in this case.
Ser No. 76595049
3
We begin our analysis by comparing applicant’s and
registrant’s services. Applicant’s services are casino
services while registrant’s services are casino services
offered to preferred customers identified by special
identification cards. Inasmuch as we do not read
limitations into applicant’s identification of services,
its casino services would include all types of casino
services including casino services offered to preferred
customers identified by special identification cards.
Therefore, the services must be considered to be identical
inasmuch as they overlap. Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed”). See also Paula
Payne Products v. Johnson Publishing 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”).
Ser No. 76595049
4
In addition, when “marks would appear on virtually
identical goods or services, the degree of similarity
necessary to support a conclusion of likely confusion
declines.” Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992).
We add that inasmuch as the services are overlapping,
we must assume that the purchasers and channels of trade
are also the same.
Where the goods in the application at issue and/or in
the cited registration are broadly identified as to
their nature and type, such that there is an absence
of any restrictions as to the channels of trade and no
limitation as to the classes of purchasers, it is
presumed that in scope the identification of goods
encompasses not only all the goods of the nature and
type described therein, but that the identified goods
are offered in all channels of trade which would be
normal therefor, and that they would be purchased by
all potential buyers thereof.

In re Jump Designs LLC, 80 USPQ2d 1370, 1374 (TTAB
2006). See also In re Elbaum, 211 USPQ 639, 640 (TTAB
1981).
Next, we compare the similarities and dissimilarities
of the marks in the application and registration.
Applicant’s mark is CLUB PALMS MVP while registrant’s mark
is for the letters MVP by themselves. Neither applicant’s
nor registrant’s mark is shown with any stylization so our
comparison must be based on the terms in the marks, CLUB
Ser No. 76595049
5
PALMS MVP and MVP. It is clear that the marks are similar
because they both contain the identical term MVP and they
differ because applicant’s mark includes the words CLUB
PALMS.
At this point, we note that the letters “MVP” stand
for “Most Valuable Player.” The Random House Dictionary of
the English Language (unabridged) (2d ed. 1987).2 See also,
www.acronymfinder.com (MVP – Most Valuable Player
(sports)).3 Most Valuable Player awards are commonly
awarded to players on sports teams. See, e.g.,
www.baseball-almanac.com (Major League Baseball);
http://football.about.com (National Football League);
www.wnba.com (Women’s National Basketball Association); and
http://charlotte49ers.com (college sports).4
Applicant agrees that the term “‘MVP’ is defined in
relation to a sports term in some dictionaries” but goes on
to argue that it is “widely recognized for its non-sport
use.” Reply Brief at 4. We note that applicant’s example
of a non-sports reference is to the use of the term to

2 We take judicial notice of this definition. University of
Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594,
596 (TTAB 1982), aff'd, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir.
1983).
3 Denial of Request for Reconsideration.
4 Denial of Request for Reconsideration.
Ser No. 76595049
6
refer to a “valued employee” and not a casino patron.5
Applicant argues that “the mark MVP, when used in
conjunction with ‘casino services offered to preferred
customers identified by special identification cards’ is
descriptive and weak … Furthermore, the Board has held that
if the marks in question are highly suggestive or merely
descriptive or play upon commonly used or registered terms,
the addition of a housemark, suggestive or commonly used or
registered term may sufficiently distinguish the marks.”
Reply Brief at 3 (emphasis omitted). See also Brief at 6
(“Appellant respectfully submits that although Registrant
was granted a federal registration for its mark MVP, the
term ‘MVP’ is descriptive when used to identify ‘casino
services offered to preferred customers identified by
special identification cards’”).
Before we begin our discussion of the marks, we point
out that this is an ex parte proceeding, and applicant is
not permitted to overcome a refusal by arguing that a cited
registration is merely descriptive. The Court stated in In

5 Applicant relies for support for this example on an entry in an
online encyclopedia, which it submitted with its reply brief.
The submission is untimely and therefore is not properly of
record. 37 CFR § 2.142(d). Nor will we take judicial notice of
this online reference work. In re Total Quality Group, Inc., 51
USPQ2d 1474, 1476 (TTAB 1999).
Ser No. 76595049
7
re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534-35 (Fed. Cir. 1997):
Dixie's argument that DELTA is not actually used in
connection with restaurant services amounts to a
thinly-veiled collateral attack on the validity of the
registration. It is true that a prima facie
presumption of validity may be rebutted. See Dan
Robbins & Assocs., Inc. v. Questor Corp., 599 F.2d
1009, 1014, 202 USPQ 100, 105 (CCPA 1979). However,
the present ex parte proceeding is not the proper
forum for such a challenge. Id. ("One seeking
cancellation must rebut [the prima facie] presumption
by a preponderance of the evidence."); Cosmetically
Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165
USPQ 515, 517 (CCPA 1970); TMEP Section 1207.01(c)(v)
(1993); 3 J. Thomas McCarthy, McCarthy on Trademarks
and Unfair Competition Section 23.24[1] [c] (3d ed.
1996). In fact, Cosmetically Yours held that “it is
not open to an applicant to prove abandonment of [a]
registered mark" in an ex parte registration
proceeding; thus, the "appellant's argument … that
[a registrant] no longer uses the registered mark …
must be disregarded." 424 F.2d at 1387, 165 USPQ at
517; cf. In re Calgon Corp., 435 F.2d 596, 598, 168
USPQ 278, 280 (CCPA 1971) (applicant's argument that
its use antedated a registered mark was effectively an
improper collateral attack on the validity of
the registration, which should have been made in
formal cancellation proceedings).

See also Hecon Corporation v. Magnetic Video Corporation,
199 USPQ 502, 507 (TTAB 1978) (“Applicant has also
contended that the term ‘COPYCORDER’ is ‘particularly
descriptive’ of opposer's goods and thus is entitled to but
a limited scope of protection. Aside from the fact that
the term ‘COPYCORDER’ is, in our opinion, only suggestive
as applied to either opposer's or applicant's goods, the
assertion of descriptiveness constitutes a collateral
Ser No. 76595049
8
attack upon the validity of opposer's pleaded registration
and as such cannot be entertained herein in the absence of
a counterclaim to cancel the same”). Therefore, inasmuch
as the cited mark is registered on the Principal Register,
we must assume that it is at least suggestive and we cannot
entertain applicant’s argument that the registered mark is
descriptive of registrant’s services.
We now move on to the main question in this case,
which is whether the addition of applicant’s house mark
CLUB PALMS to the registered mark MVP results in marks that
are dissimilar. There have been numerous cases over the
years that have reached different conclusions on whether
the addition of a house mark avoids confusion. It has long
been held that the addition of a trade name or house mark
to a registered mark does not generally avoid confusion.
Menendez v. Holt, 128 U.S. 514, 521 (1888). “However,
there is no arbitrary rule of law that if two product marks
are confusingly similar, likelihood of confusion is not
removed by use of a company or housemark in association
with the product mark.” New England Fish Company v. The
Hervin Company, 511 F.2d 562, 184 USPQ 817, 819 (CCPA
1975)(BLUE MOUNTAIN KITTY O’s and KITTY not similar). In
these cases, we must, of course, consider the entire marks,
Ser No. 76595049
9
including the presence of the house mark in applicant’s
mark in light of the evidence of record.
The board has described the different effects the
addition of a house mark to a registered mark can have in a
likelihood of confusion case:
[S]uch addition may actually be an aggravation of the
likelihood of confusion as opposed to an aid in
distinguishing the marks so as to avoid source
confusion. On the other hand, where there are some
recognizable differences in the asserted conflicting
product marks or the product marks in question are
highly suggestive or merely descriptive or play upon
commonly used or registered terms, the addition of a
housemark and/or other material to the assertedly
conflicting product mark has been determined
sufficient to render the marks as a whole sufficiently
distinguishable.

In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985)
(citations omitted) (Applicant’s LE CACHET DE DIOR
confusingly similar to the registered mark CACHET).
In this case, the common term in the marks, MVP, is
identical. Therefore, such cases as Rockwood Chocolate Co.
v. Hoffman Candy Co., 372 F.2d 552, 152 USPQ 599 (CCPA
1967), involving non-identical terms, are not as relevant.
(ROCKWOOD BAG-O-GOLD for candy not confusingly similar to
CUP-O-GOLD for candy).
When, as in this case, the common part of the marks is
identical, purchasers familiar with the registrant’s mark
are likely to assume that the house mark simply identifies
Ser No. 76595049
10
what had previously been an anonymous source. In In re
Hill-Behan Lumber Company, 201 USPQ 246 (TTAB 1978), the
board explained that:
Thus, for purposes herein, the “LUMBERJACK” marks of
the parties are identical. In such a situation, the
addition of applicant's house mark “HILL-BEHAN'S”
thereto is not deemed sufficient to distinguish the
marks as a whole and to avoid confusion in trade.
This is especially so when one considers that a
trademark or a service mark identifies an anonymous
source so that the average consumer in the marketplace
is, more often than not, unaware of the producer of
the goods sold under a mark and often doesn't care, so
long as the quality of the goods identified by the
mark remains the same. Thus, if those individuals
familiar with registrant's “LUMBERJACK” products were
to encounter “HILL-BEHAN'S LUMBER JACK” stores at
which lumber products are sold, there is nothing to
preclude them from assuming that “HILL-BEHAN” is the
source of the "LUMBERJACK" products and has
established retail outlets to market them. Whether it
be confusion of source or sponsorship, the likelihood
of such confusion is there and, as a consequence,
registrant's registered mark is a bar to the
registration sought by applicant.

Id. at 249-50. See also In re C.F. Hathaway Co., 190 USPQ
343 (TTAB 1976) (HATHAWAY GOLF CLASSIC for knitted sports
shirts confusingly similar to GOLF CLASSIC for men’s hats).
However, more recently, the board was faced with a
situation in which applicant sought registration of the
mark NORTON McNAUGHTON ESSENTIALS for clothing items and
the examining attorney refused registration because of a
registration for ESSENTIALS for some of the identical
clothing items. Knight Textile Corp. v. Jones Investment
Ser No. 76595049
11
Co., 75 USPQ2d 1313 (TTAB 2005). In that case, the board
held: “In terms of overall commercial impression, we find
that although the word ESSENTIALS is the entirety of the
commercial impression created by opposer's mark, in
applicant's mark it contributes relatively less to the
mark's commercial impression than does the house mark
NORTON MCNAUGHTON. This is because … we find that the word
ESSENTIALS is highly suggestive as applied to the parties’
clothing items and as it appears in both parties’ marks,
especially in applicant's mark.” Id. at 1315.
As evidence of the highly suggestive nature of
ESSENTIALS, the board relied on a definition of
“essentials” as connoting that “the clothing items sold
under the marks are basic and indispensable components of,
or ‘essentials’ of, one's wardrobe” as well as third-party
registrations of ESSENTIALS marks that applicant made of
record. Id. at 1316. The evidence of third-party
registrations consisted of “twenty-three extant ESSENTIALS
registrations on the register in the clothing field,
registered to twenty-one different owners.” Id.
Applicant makes similar arguments to those reflected
in the board’s Knight Textile opinion. See, e.g., Reply
Brief at 3-4 (“[T]he term ‘MVP’ has a defined and widely
known meaning as an acronym that stands for ‘Most Valuable
Ser No. 76595049
12
Player,’ and it often [is] used in the context of sports or
sporting event. However, Appellant respectfully submits
that the acronym ‘MVP’ is used more broadly than just in
the sports world”).
Applicant also argues (Brief at 6):
Furthermore, a cursory search of the USPTO website led
to the discovery of 173 records using the term “MVP”
as all or part of a trademark. Out of these 173
references utilizing the term “MVP” in a trademark
sense, 123 of them are currently registered for a
variety of goods and services. Due to widespread use
of the term “MVP,” the average customer is certainly
aware that “MVP” is used by many different providers
of goods and/or services and will not automatically
assume that any and all entities using the term are
related. In other words, consumers have been
inundated with the various unrelated trademark uses of
the term “MVP;” thus, there is little probability that
they will be confused as to the origin of the goods
and/or services provided under the numerous “MVP”
marks.

The examining attorney responded to this “evidence” by
arguing that:
Applicant’s mere list of registrations in its “cursory
search of the USPTO website,” should not be considered
as part of the record. It is well held [sic] that the
mere submission of a list of registrations does not
make a registration part of the record… The applicant
has not provided the Board with copies of the
registration[s] and it is respectfully requested that
the list provided not be considered as part of the
record.

In the alternative, should the Board allow applicant’s
list of registered marks to be considered as part of
the record, the Trademark Examining Attorney
respectfully submits that a search of third-party
registrations incorporating the term “MVP” in the
context of casino and/or gaming services returned only
Ser No. 76595049
13
one registered mark – the registered mark at issue now
before the board, MVP. The registered mark’s strength
is therefore bolstered by the fact that no other marks
bearing the term “MVP” are registered for use in
connection with casino and/or gaming services.

Brief at unnumbered pp. 11-12 (Citation to record
omitted).
Finally, applicant responds (Reply Brief at 5-6) as
follows:
While Appellant is aware that the list6 of
registrations and live applications7 printed from the
USPTO official website is not the proper form to
introduce evidence of third-party registrations into
the record, it respectfully urges this Board to
consider this list, not as evidence of the individual
registrations for the mark MVP, but rather as evidence
of the prevalent and common use of the acronym MVP
under a wide variety of circumstances. It is this
kind of use on which Appellant bases its argument that
consumers are accustomed to seeing the acronym in
commerce used in connection with a variety of goods
and services, and not just as a sports term.
Appellant did not feel it was necessary to [sic] for
the Board to be inundated with printouts of hundreds
of pages of registrations and applications just to
make the point that the acronym MVP is widely used and
highly recognized by the consuming public at large.
In Appellant’s opinion, that is readily shown by the
list of hundreds of registrations and applications
incorporating the acronym MVP and the fact that a

6 Although applicant and the examining attorney referred to a
“list” in their briefs, it does not appear that applicant
submitted an actual “list,” but merely discussed the number of
records it had found. Whether or not an actual list was
submitted is irrelevant, however, because, as discussed, any such
list would not affect our decision.
7 Pending applications, even if they were of record, are
“competent to prove only the filing thereof.” Olin Corp. v.
Hydrotreat, Inc., 210 USPQ 62, 65 n.5 (TTAB 1981).
Ser No. 76595049
14
simple “Google” search8 turns up millions of hits where
the term MVP is used outside of sports reference.

There are numerous problems with applicant’s argument.
First, we must decide cases on the basis of the record, and
as even applicant appears to admit, a list of registrations
does not make the registrations of record. In re Duofold,
Inc., 184 USPQ 638, 640 (TTAB 1974). Second, while “third-
party registrations can be used in the manner of a
dictionary definition to illustrate how a term is perceived
in the trade or industry,” In re Box Solutions Corp., 79
USPQ2d 1953 (TTAB 2006), without these registrations or
some other evidence, we cannot conclude that the term “MVP”
is highly suggestive as the term “Essentials” was held to
be in the Knight Textile case. Third, even if third-party
registrations were properly made of record, they are not
evidence that the mark MVP is in use. AMF Inc. v. American
Leisure Prods., Inc., 474 F.2d 1403, 177 USPQ 268, 269
(CCPA 1973) ("The existence of [third-party] registrations
is not evidence of what happens in the market place or that
customers are familiar with them"). Fourth, even if there
were evidence that MVP is used for non-related goods or
services, this would hardly establish by itself that it is

8 We add that the Google search report that applicant references
in its Reply Brief is not of record.
Ser No. 76595049
15
weak for casino services. SBS Products Inc. v. Sterling
Plastic & Rubber Products Inc., 8 USPQ2d 1147, 1149 n.6
(TTAB 1988) (“[E]ven if evidence of such third-party use
were submitted, it would be of no aid to respondent herein
where the third-party usage was for goods unrelated to
either petitioner's skin care products or respondent's
stuffing box sealant”).
Finally, we address the applicant’s comments that it
did not want to inundate the board “with printouts of
hundreds of pages of registrations.” Certainly, the board
does not wish to be inundated with hundreds of pages of
cumulative information. However, applicant loses sight of
the fact that ultimately we must decide the case based on
the evidence of record and not on what either the examining
attorney or applicant argues the facts are. As we
cautioned in In re Planalytics Inc., 70 USPQ2d 1453, 1457
(TTAB 2004) (footnote omitted):
If an applicant has relevant information, it is
incumbent on applicant to make this information of
record. A mere reference to a website does not make
the information of record. In order to review the
facts in this case, there should be evidence in the
record.

We now turn to a comparison of the marks, keeping in
mind as we noted earlier, that the only difference between
the marks is the addition of applicant’s house mark to
Ser No. 76595049
16
registrant’s MVP mark. The question then becomes whether
that additional house mark results in marks that are
dissimilar enough that confusion is not likely.
Applicant’s house mark is a difference between the marks,
but we conclude that it does not result in marks that are
dissimilar for likelihood of confusion purposes. Unlike
the party in Knight Textile, applicant has not submitted
evidence that the term MVP is so highly suggestive that the
inclusion of its house mark would create significant
differences in the marks’ appearance, pronunciation,
meaning, and commercial impression. In addition, applicant
has not submitted any evidence that the term MVP is used by
others in the casino field or that it has any specific
meaning in that field other than the general dictionary
meaning of a “most valuable player,” which is often used in
the field of sports. See, e.g., In re Broadway Chicken
Inc., 38 USPQ2d 1559, 1565 (TTAB 1996) (“[W]e conclude that
the evidence offered by applicant is sufficient to
establish prima facie that a significant number of third
parties are using trade names/service marks containing the
term BROADWAY for restaurant/‘eating place’ services, as
well as for goods and services related thereto”). Because
applicant has not demonstrated that MVP is a highly
suggestive term for casino services, the addition of the
Ser No. 76595049
17
house mark CLUB PALMS is not sufficient to distinguish
these otherwise identical marks, and the marks CLUB PALMS
MVP and MVP are similar in sound, appearance, meaning, and
connotation.
Therefore, we conclude that, based on the evidence of
record, when we consider that applicant’s identified
services include registrant’s services and that the marks
contain the identical common term, the addition of
applicant’s house mark does not eliminate the likelihood of
confusion. Consumers familiar with registrant’s MVP mark
for its casino services are likely to believe that there is
some association or sponsorship with applicant’s CLUB PALMS
MVP casino services. Indeed, a consumer who has been told
about the advantages of registrant’s MVP casino services is
likely to believe that the CLUB PALMS MVP casino services
is simply the now identified source of the previously
anonymous MVP casino services. To the extent that we have
any doubts, we resolve them, as we must, in registrant’s
favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 463, 6
USPQ2d 1025, 1026 (Fed. Cir. 1988); In re Pneumatiques,
Caoutchouc Manufacture et Plastiques Kleber-Colombes, 487
F.2d 918, 179 USPQ 729, 729-30 (CCPA 1973); and Jump
Designs, 80 USPQ2d at 1376.
Ser No. 76595049
18
Decision: The examining attorney’s refusal to
register applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.