Fortuna LI LLC

Trademark Trial and Appeal Board

May 23, 2016

No. 86023474 (T.T.A.B. May. 23, 2016)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 23, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Fortuna LI LLC
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Serial No. 86023474
_____

Holly Pekowsky of Amster Rothstein & Ebenstein LLP,
for Fortuna LI LLC.
David E. Tooley, Jr., Trademark Examining Attorney, Law Office 112,
Angela Bishop Wilson, Managing Attorney.
_____

Before Kuczma, Greenbaum and Masiello,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
Fortuna LI LLC (“Applicant”) seeks registration on the Principal Register of the
mark HOTEL HUGO (in standard characters) for:
Hotel services in International Class 43.1
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood

1 Application Serial No. 86023474 was filed on July 30, 2013, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b). The services were amended to “hotel services” and the
word “Hotel” was disclaimed in the March 5, 2014 Response to Office Action.
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of confusion with the marks in the following registrations owned by SJL Management
Holdings, LLC:
Registration No. 33221672 for HUGO’S FROG BAR
(standard character) for restaurant and bar services, in
International Class 43;
Registration No. 33221743 for HUGO’S (standard
character) for restaurant and bar services, in International
Class 43;
Registration No. 44433574 for HUGO’S FROG BAR &
FISH HOUSE (standard character) for Restaurant
services; Restaurant services, including sit-down service of
food and take-out restaurant services; Restaurant services,
namely, providing of food and beverages for consumption
on and off the premises, in International Class 43; and
Registration No. 44478775 for HUGO’S FROG BAR &
FISH HOUSE & Design for bar services; restaurant
services; restaurant services, including sit-down service of
food and take-out restaurant services; restaurant services,
namely providing of food and beverages for consumption on
and off the premises, in International Class 43.
After the Trademark Examining Attorney made the refusal final, Applicant
requested reconsideration. Applicant’s request for reconsideration was denied and
Applicant appealed to this Board. We have considered the evidence and arguments
presented by Applicant and the Examining Attorney, and affirm the refusal to
register.

2 Registered October 30, 2007; Sections 8 and 15 combined declaration accepted and
acknowledged. “Bar” is disclaimed.
3 Registered October 30, 2007; Sections 8 and 15 combined declaration accepted and
acknowledged.
4 Registered December 3, 2013. “Bar & Fish House” is disclaimed.
5 Registered December 10, 2013. “Bar & Fish House” is disclaimed.
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I. Likelihood of Confusion
Our determination under § 2(d) is based on an analysis of all 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). Here, the key considerations are the similarities between
the marks and the relatedness and nature of the services. See In re Viterra Inc., 671
F. 3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Dakin’s Miniatures Inc.,
59 USPQ2d 1593, 1595-96 (TTAB 1999). Additionally, the strength, or weakness, of
“HUGO” was also argued and considered.
We will conduct our analysis as to the issue of likelihood of confusion between
Applicant’s mark HOTEL HUGO and the mark HUGO’S (in standard characters) in
Registration No. 3322174. Of all the cited marks, this one is the most similar to
Applicant’s mark. If the refusal cannot be affirmed on the basis of this registered
mark, it could not be affirmed on the basis of the other cited marks. See In re Max
Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Similarity or dissimilarity of the marks in their entireties as to
appearance/sound/connotation and commercial impression
We consider the first du Pont factor, focusing on the similarity or dissimilarity of
the marks in their entireties as to appearance, sound, connotation and commercial
impression. In re Viterra Inc., 101 USPQ2d at 1908; du Pont, 177 USPQ at 567.
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The dominant term of Applicant’s mark is HUGO, because HOTEL is merely
descriptive or generic as applied to Applicant’s services and would not be relied upon
by customers as a source-indicator. Adding the generic name for the thing, i.e.,
“hotel,” to an arbitrary term, “Hugo,” does not meaningfully change the commercial
impression of the mark from HUGO alone. Applicant has also disclaimed exclusive
rights in the word “Hotel.” It is well-settled that disclaimed, descriptive matter may
have less significance in likelihood of confusion determinations. See Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000), quoting, In
re Nat’l Data Corp., 224 USPQ at 752 (“Regarding descriptive terms, this court has
noted that the ‘descriptive component of a mark may be given little weight in reaching
a conclusion on likelihood of confusion.’”); In re Dixie Rests. Inc., 105 F.3d 1405, 1407,
41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d
1699, 1702 (TTAB 2001).
Applicant’s mark HOTEL HUGO and Registrant’s mark HUGO’S are similar in
appearance, sound, meaning and commercial impression due to the inclusion of
“Hugo” in each mark. Although we consider each mark in its entirety, 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 that our ultimate conclusion rests upon a
comparison of the marks in their entireties. In re Nat’l Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985). Thus, the addition of HOTEL to HUGO in
Applicant’s HOTEL HUGO mark does not suffice to obviate the similarity between
the marks.
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Applicant notes that its mark HOTEL HUGO is distinguishable from the cited
mark HUGO’S because the cited mark contains “ ’S” which is “noticeably absent in
Applicant’s mark.”6 However, the absence of the possessive form in Applicant’s mark
has little significance. See In re Binion, 93 USPQ2d 1531, 1534 (TTAB 2009) (noting
that “[t]he absence of the possessive form in applicant’s mark . . . has little, if any,
significance for consumers in distinguishing it from the cited mark”); In re Curtice-
Burns, Inc., 231 USPQ 990, 992 (TTAB 1986) (finding the marks McKENZIE’S and
McKENZIE “virtually identical in commercial impression”); Winn’s Stores, Inc. v. Hi-
Lo, Inc., 203 USPQ 140, 143 (TTAB 1979) (noting that “little if any trademark
significance can be attributed to the apostrophe and the letter ‘s’ in opposer’s mark”).
The test, under the first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in their entireties that confusion as to the source of the
services offered under Applicant’s and Registrant’s marks is likely to result. The focus
is on the recollection of the average purchaser, who normally retains a general rather
than a specific impression of trademarks. See Midwestern Pet Foods, Inc. v. Societe
des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed. Cir. 2012); In
re Binion, 93 USPQ2d at 1534 citing Sealed Air Corp. v. Scott Paper Co., 190 USPQ
106 (TTAB 1975).
Applicant’s unsupported argument that the commercial impression created by its
mark is grand and opulent creating an upscale hotel experience, while Registrant’s

6 Applicant’s Brief p. 5 (4 TTABVUE 6).
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mark presents a more casual impression leading consumers to believe that HUGO is
an individual who is personally inviting the consumer to his restaurant,7 is not
supported by any evidence and is not persuasive.
Upon comparing the marks in their entireties, Applicant’s mark HOTEL HUGO
is similar to the cited mark HUGO’S in appearance, sound, meaning and commercial
impression such that if they were used in connection with similar or related services,
there would be a likelihood of confusion.
B. Strength or Weakness of the Cited Marks
In support of its argument that its mark HOTEL HUGO is not confusingly similar
to the cited marks, Applicant contends the “HUGO” component of Registrant’s marks
is inherently weak because it is a personal name which is a descriptive term.8
Contrary to the cases cited by Applicant which were not decided by the Board or by
its primary reviewing court, the USPTO views personal names as inherently
distinctive and registrable on the Principal Register. See Brooks v. Creative Arts By
Calloway LLC, 93 USPQ2d 1823, 1830 (TTAB 2009) rev’d on other grounds, 2012 WL
6732907 (S.D.N.Y. 2012) (“We hold that when a plaintiff is asserting prior rights
based on a personal name, not a surname, the personal name trademark is inherently
distinctive.”). Additionally, the cases offered by Applicant in support of its further
position that marks will not be found confusingly similar if the shared element is a

7 Applicant’s Brief p. 7 (4 TTABVUE 8).
8 Applicant’s Brief p. 3 (4 TTABVUE 4).
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common suggestive element9 offer little support as they do not involve personal name
marks.
Applicant also argues that the cited marks are weak and entitled to only very
narrow protection, because there are third-party marks containing “Hugo” in
connection with restaurant and food services. In support, Applicant offers evidence of
a single registration, Registration No. 4152370, for the mark HUGO & VICTOR for
“providing food and drink; bar services; food and drink catering; hotels,” and a
published application, Serial No. 86508,805, for HUGO & SONS for “restaurant
services.”10 One third-party registration has little probative value, especially in the
absence of evidence that the mark is in use on a commercial scale or that the public
has become familiar with it. Olde Tyme Foods Inc. v. Roundy’s Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992); Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d
1004, 177 USPQ 462, 463 (CCPA 1973); In re Mr. Recipe, LLC, 118 USPQ2d 1084,
1089 (TTAB 2016); Productos Lacteos Tocumbo S.A. de C.V. v. Paleteria La
Michoacana Inc., 98 USPQ2d 1921, 1934 (TTAB 2011); In re Hub Distributing, Inc.,
218 USPQ 284, 285 (TTAB 1983). Further, there is no evidence that the application
cited by Applicant ever registered. A pending application is evidence only that the
application was filed on a certain date; it is not evidence of use of the mark. In re Mr.
Recipe, LLC, 118 USPQ2d at 1089. Moreover, actions of other trademark examining
attorneys in registering other marks have little evidentiary value and are not binding

9 Applicant’s Brief pp. 3-4 (4 TTABVUE 4-5).
10 Applicant’s Brief pp. 4-5 (4 TTABVUE 5-6).
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upon the USPTO or the Trademark Trial and Appeal Board. See In re Midwest
Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (citing In re Nett
Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001)).
The more recent decisions of our primary reviewing court in Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1135-36 (Fed. Cir. 2015) and Juice Generation, Inc. v.
GS Enters. LLC, 794 F.3d 1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015), are not to
the contrary. Those decisions highlight that a “considerable” or “extensive” number
of third-party registrations may well have, in the aggregate, evidentiary value. By
contrast, here, Applicant has introduced only a single registration and there is no
indication of the impact of the mark’s use on consumers.
In view of the foregoing, the evidence does not support a finding that the term
“Hugo” is diluted or otherwise weak. Indeed, there is no evidence that the cited mark
HUGO’S is anything other than arbitrary for restaurant and bar services. Therefore,
the cited mark is inherently strong, supporting a finding of likelihood of confusion
between Applicant’s mark and the cited mark.
C. Similarity of the Services
We turn next to the du Pont factor involving the similarity or dissimilarity of
Applicant’s and Registrant’s services. Insofar as the services are concerned, it is not
necessary that the respective services be competitive, or even that they move in the
same channels of trade to support a holding of likelihood of confusion. It is sufficient
that the respective services are related in some manner, and/or that the conditions
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and activities surrounding the marketing of the services are such that they would or
could be encountered by the same persons under circumstances that could, because
of the similarity of the marks, give rise to the mistaken belief that they originated
from the same producer. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
1369, 101 USPQ2d 1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83
USPQ2d 1715, 1724 (TTAB 2007)); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991). The issue, of course, is not whether purchasers would confuse the services, but
rather whether there is a likelihood of confusion as to the source of the services. In re
i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015); In re Rexel Inc., 223 USPQ
830, 831 (TTAB 1984).
The Examining Attorney introduced ten third-party use-based registrations in
support of his argument regarding the relatedness of the services. The registrations
show that each registrant adopted a single mark for restaurant and/or bar services
on the one hand, and hotel services on the other hand.11 “Third-party registrations
which cover a number of differing goods and/or services, and which are based on use
in commerce, although not evidence that the marks shown therein are in use on a
commercial scale or that the public is familiar with them, may nevertheless have
some probative value to the extent that they may serve to suggest that such goods or
services are of a type which may emanate from a single source.” In re Mucky Duck

11 See Exhibit C to 11/14/2013 Office Action: Registration Nos. 4420703 (CHC COSTA
HOLLYWOOD & design), 4393844 (HOW SWEET & design), 4353159 (EXPERIENCES BY
MARRIOTT), 4346798 (TÁNTALO), 4433777 (GRAND HYATT & design), 4379272 (THE
INN AT ST. JOHN’S), 4387347 (THE INN AT OPRYLAND), 4420118 (Supplemental
Register) (CABBAGE KEY), 4414584 (LONGMAN & EAGLE), 4421885 (N and design).
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Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir.
1988). This evidence shows that the services listed therein are of a kind that may
emanate from a single source under a single mark. See also In re Anderson, 101
USPQ2d 1912, 1919 (TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993).
Additionally, the Examining Attorney submitted Internet evidence retrieved from
several third-party websites showing not only hotels that provide restaurant and
room service dining services,12 but the same establishments offering hotel and
restaurant and bar services under the same name (see, e.g., Weber’s Restaurant &
Hotel, Panama Hotel and Restaurant, The Cosmopolitan Hotel & Restaurant, The
Red Caboose Motel & Restaurant and Jasper’s Restaurant & Motel).13 Thus, as shown
by the evidence, including Applicant’s own website where Applicant’s bar is called
BAR HUGO14, “hotel” and “restaurant and bar” services are often provided under the
same name. Although Applicant submitted evidence of hotels having different names
from the names of the bars and restaurants located within the hotels,15 the evidence
submitted by the Examining Attorney shows “hotel services” are related to
Registrant’s “restaurant services.” In fact, hotel and restaurant/bar services are so

12 See Exhibit B attached to 4/27/2015 Final Office Action including portions of websites from
The Ritz-Carlton, Atlanta; JW Marriott Atlanta Buckhead; Hilton Atlanta; and the Mandarin
Oriental Atlanta.
13 See Exhibit A attached to 4/27/2015 Final Office Action.
14 See portion of Applicant’s website www.hotelhugony.com/food-and-drink attached to
8/26/2015 Request for Reconsideration Denied.
15 Response to Office Action of November 14, 2013 p. 3-4 and Exhibits A-J.
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commonly offered by the same providers that the USPTO includes several pre-
approved identifications in its Identification Manual containing those services.16
Applicant argues that its hotel services are different from the restaurant and bar
services provided under the cited mark.17 In support of its position, Applicant relies
on the unpublished decision in In re Captain Morgan’s Retreat, Serial No. 74/554,300,
1998 TTAB LEXIS 16 (TTAB March 26, 1998), where the Board found no likelihood
of confusion between CAPTAIN MORGAN’S SEAFOOD for restaurant services and
CAPTAIN MORGAN’S RETREAT for resort and hotel services. According to
Applicant, “[i]n finding confusion unlikely, the Board pointed out that the Federal
Circuit has held that consumers would be readily able to distinguish between even
resort services and hotel services” citing to In re Captain Morgan’s Retreat at *4 which
cited In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071, 1072 (Fed. Cir.
1993)18 (finding that a consent agreement between the applicant and the cited
registrant carried “great weight” in the likelihood of confusion analysis).
The decision in In re Captain Morgan’s Retreat is not a precedential decision of
the Board19 and is not controlling. More importantly, each case is decided on its own

16 See listings in Trademark ID Manual attached as Exhibit E (p. 45) to 4/27/2015 Final Office
Action: Hotel and restaurant services; Hotel bar and restaurant services; Hotel, motel,
restaurant, bar and catering services; Hotel, restaurant and catering services; Hotel,
restaurant and bar services; and Restaurant and hotel services.
17 Applicant’s Brief p. 8 (4 TTABVUE 9).
18 Applicant’s Brief p. 8 (4 TTABVUE 9).
19 Although parties may cite non-precedential decisions, the Board does not encourage the
practice. In re Morrison & Foerster LLP, 110 USPQ2d 1423, 1427 n.6 (TTAB 2014);
Corporacion Habanos SA v. Rodriguez, 99 USPQ2d 1873, 1875 n.5 (TTAB 2011). See also In
re Luxuria s.r.o., 100 USPQ2d 1146, 1151 n.7 (TTAB 2011) (parties may cite non-precedential
Serial No. 86023474
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facts, and each mark stands on its own merits. See AMF Inc. v. Am. Leisure Prods.,
Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973); In re Binion, 93 USPQ2d at
1536. While the applicant in In re Captain Morgan’s Retreat sought to register its
mark for resort and hotel services, the examining attorney “presented absolutely no
evidence showing that resorts use their names to likewise name the restaurants
within the resorts.” This case presents a very different situation from those found in
the Captain Morgan’s Retreat and Four Seasons Hotels cases. Here, the evidence
shows that the same providers offer hotel services as well as restaurant and bar
services under the same name and, there is no consent agreement, supporting a
finding that Applicant’s hotel services are related to the restaurant and bar services
covered in the cited registration.
Applicant also cites In re Coors Brewing Co., 68 USPQ2d 1059, 1063 (Fed. Cir.
2003), to support its argument that the third-party registration evidence submitted
by the Examining Attorney is not enough to support a finding of likelihood of
confusion.20 That case, unlike the present case, involved the question of whether beer
and restaurant services were related. The court in Coors recognized the requirement
that “something more” be shown to establish the relatedness of food products and
restaurant services for purposes of demonstrating likelihood of confusion. 68 USPQ2d
at 1063. Here, the issue does not involve the likelihood of confusion between food
products and restaurant services, but rather restaurant and bar services, and hotel

decisions, but they are not binding on the Board and because they have no precedential effect,
the Board generally will not discuss them in other decisions).
20 Applicant’s Appeal Brief p. 9 (4 TTABVUE 10).
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services. Thus, that case is not directly relevant to the issues presented here.
Moreover, even if it were, there is more than enough third-party use and registration
evidence to support a finding of relatedness.
The comparison here is between Registrant’s “restaurant and bar services” and
Applicant’s “hotel services.” We note that Applicant’s original recitation of services
included “restaurant, roof top bar and lounge services;” in response to the § 2(d)
refusal made by the Examining Attorney, Applicant deleted those services from its
recitation. Thus, when Applicant filed the application, Applicant expressed a good
faith intention to use its mark in connection with hotel services and restaurant and
bar services.
Applicant admits that both Applicant’s and Registrant’s services are rendered in
the hospitality industry and that hotels often contain restaurants as part of their
hotel services.21 It then argues that “stand-alone restaurants are never expected to
contain hotel or motel services,” and that the Examining Attorney is “seeking to bar
the registration of a hotel mark with an existing registration of a stand-alone
restaurant mark ….”22 This argument is not well based as the cited Registration is
for “restaurant and bar services” not “stand-alone” restaurant and bar services.
Registrant’s services are not limited and therefore must be construed to encompass
all types of restaurant services, including stand-alone restaurants as well as

21 Applicant’s Appeal Brief at p. 8 (4 TTABVUE 10).
22 Applicant’s Appeal Brief at pp. 8-9 (4 TTABVUE 10-11).
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restaurants that are located on hotel property. In re Binion, 93 USPQ2d at 1535; see
also In re Smith & Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994).
Moreover, Applicant may not restrict the services identified in the registration by
attorney argument or extrinsic evidence. Likelihood of confusion must be determined
based upon an analysis of the mark applied to the services recited in Applicant’s
application vis-s-vis the services in the cited Registration. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir.
2014); In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed Cir. 1997);
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990).
Accordingly, the du Pont factor bearing on the similarity or relatedness of the
services weighs in favor of a finding of likelihood of confusion.
II. Conclusion
In view of the foregoing, because the marks are similar and the services are
related, we find that there is a likelihood of confusion between Applicant’s mark
HOTEL HUGO and the cited mark HUGO’S within the meaning of § 2(d).

Decision: The refusal to register Applicant’s mark HOTEL HUGO is affirmed.