Gramaw, Inc.

Trademark Trial and Appeal Board

Aug 4, 1999

No. 75128212 (T.T.A.B. Aug. 4, 1999)

Paper No. 18
GDH/gdh
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB AUG 4, 99
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Gramaw, Inc.
________
Serial No. 75/128,212
_______
Arthur G. Yeager, Esq. for Gramaw, Inc.
Andrew P. Baxley, Trademark Examining Attorney, Law Office 104
(Sidney I. Moskowitz, Managing Attorney).
_______
Before Simms, Hohein and Wendel, Administrative Trademark Judges.
Opinion by Hohein, Administrative Trademark Judge:
Gramaw, Inc. has filed an application to register the
mark "BE$T BUDGET INNS" and design, as reproduced below,
as a service mark for "motel services featuring restaurants".1

1 Ser. No. 75/128,212, filed on July 1, 1996, which alleges a date of
first use anywhere of January 1, 1993 and a date for first use in
commerce of October 18, 1993. The words "BEST BUDGET INNS" are
disclaimed and the mark is described as follows: "The mark consists
in part of four stylized dollar signs. In addition, the letter S in
the word BEST is represented by a dollar sign."
Ser. No. 75/089,246
2
Registration has been finally refused under Section
2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that
applicant's mark, when applied to its services, so resembles the
mark "BEST INNS OF AMERICA" and design, which is registered, as
illustrated below,
for "motel services,"2 as to be likely to cause confusion,
mistake or deception.
Applicant has appealed. Briefs have been filed,3 but
an oral hearing was not requested. We affirm the refusal to
register.

2 Reg. No. 1,117,458, issued on May 1, 1979, which sets forth dates of
first use of April 1974; renewed. The word "INNS" is disclaimed.
3 As the Examining Attorney correctly points out in the objection
raised in his brief, the information attached to applicant’s initial
brief concerning certain third-party registrations is untimely under
Trademark Rule 2.142(d) and such accordingly does not form part of the
record in this appeal. We hasten to add, however, that even if the
evidence were to be considered, it would make no difference in the
result herein inasmuch as it is settled that a mere listing of third-
party registrations or the submission of copies thereof does not
demonstrate that the subject marks are in actual use to such an extent
that the purchasing public is familiar with them and has learned to
distinguish the marks by elements other than the feature(s) common
thereto. As stated by the court in AMF Inc. v. American Leisure
Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA 1973):
We have frequently said that little weight is to be given
such registrations in evaluating whether there is
likelihood of confusion. The existence of these
registrations is not evidence of what happens in the market
place or that customers are familiar with them nor should
the existence on the register of confusingly similar marks
aid an applicant to register another likely to cause
confusion, mistake or to deceive.
Ser. No. 75/089,246
3
Turning first to consideration of the respective
services, applicant admits in its initial brief that its motel
services "are identical" to those of the registrant. We agree
that such services, as identified in the application and
registration, are indeed identical in part and, for all practical
purposes, are essentially the same inasmuch as motel services
often feature restaurant services. Clearly, if motel services
were to be rendered under the same or similar marks, confusion as
to the source or sponsorship of such services would be likely to
occur.
Considering, therefore, the marks at issue herein,
applicant argues that, when considered in their entireties, "the
design elements of each of the respective marks as well as the
non-disclaimed inclusion of the words OF AMERICA in registrant’s
composite mark clearly obviates the similarity between the marks
in sound, ... meaning, ... appearance, and ... commercial
impression to the public." Applicant, in particular, stresses
that the presence of the dollar signs in its mark, which are
absent from registrant’s mark, "engenders in the minds of the
public ... low cost or money saving ... services," a connotation
and commercial impression which is lacking in registrant’s mark.
In view thereof, and in light of the laudatory meaning of the
term "BEST" in the respective marks, applicant insists that
confusion as to source or sponsorship is not likely.

See also In re Hub Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
Moreover, and in any event, none of the marks in the third-party
registrations is as similar to applicant’s mark as is the mark in the
cited registration.
Ser. No. 75/089,246
4
We concur with the Examining Attorney, however, that
such confusion is likely since, as correctly and persuasively
pointed out in his brief:
When a mark consists of a word portion and a
design portion, the word portion is more
likely to be impressed upon a purchaser’s
memory and to be used in calling for the
goods or services. In re Appetito Provisions
Co., 3 USPQ2d 1553 (TTAB 1987); In re Drug
Research Reports, Inc., 200 USPQ 554 (TTAB
1978); [and] Amoco Oil Co. v. Amerco, Inc.,
192 USPQ 729 (TTAB 1976). For this reason,
... greater weight [must be given] to the
word portions of the marks in determining
whether there is a likelihood of confusion.
Although the applicant has disclaimed BEST
BUDGET INNS and the registrant has disclaimed
INNS, disclaimers do not remove the
disclaimed portions from the marks for
purposes of determining likelihood of
confusion. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985);
Specialty Brands, Inc. v. Coffee Bean
Distributors, Inc., 748 USPQ 669, 223 USPQ
1281 (Fed. Cir. 1984); [and] In re MCI
Communications Corp., 21 USPQ2d 1535 (Comm’r
Pats. 1991).
In addition, the disclaimers in the third-party
registrations made of record by the Examining Attorney,4 as well
as the excerpts from his search of the "NEXIS" data base5 and an

4 Specifically, a registration for the mark "GLOBAL BUDGET INNS OF
AMERICA" for "motel services" includes a disclaimer of the words
"BUDGET INNS"; a registration for the mark "BUDGET INN" and design for
"motel and lodging services" disclaims the words "BUDGET INN"; a
registration for the mark "AMERICAN BUDGET INN" and design for "motel
services" includes a disclaimer of the words "BUDGET INN"; and a
registration for the mark "BUDGET INN CLEAN & COMFY" and design
includes a disclaimer of the words "BUDGET INN".
5 The following examples are especially pertinent (emphasis added):
"[Vancouver] offers travel packages of performance
tickets, a choice of discounted rooms at 27 hotels (from
budget inns to luxury properties), plus round-trip Seattle-
Vancouver rail tickets on Amtrak." -- Seattle Times,
December 1, 1996;
Ser. No. 75/089,246
5
article submitted by applicant from Consumer Reports,6 show that
the terms "budget" and "budget inns" are generic designations for
a category of lower-priced lodging or motel services. In view
thereof, and in light of the obvious generic significance of the
word "inns" in the respective marks,7 the Examining Attorney
contends that:
Despite the marks’ different design
components and the registrant’s addition of
the geographically descriptive wording OF
AMERICA to its mark, the applicant and the
registrant both combine the laudatorily
descriptive word BEST with generic wording
for a type of lodging. ....

"We stayed once again at a budget inn, the Nuevo Hotel
Boston ($22 double)." -- International Travel News,
September 1996;
"After being stuck for years between upscale business
hotels they couldn’t afford and budget inns that didn’t
meet their needs, the midlevel executives who travel
finally have gotten the attention of the hotel industry."
-- Orlando Sentinel, June 15, 1996;
"Courtyard is Marriott’s chain of limited-service
hotels, priced under full-service luxury hotels but more
expensive that budget inns." -- Denver Post, April 25,
1996; and
"Anguilla is an island with ... gourmet restaurants,
sun-bleached beach shacks, deluxe resorts, budget inns, ...
and a new post office." -- Travel Weekly, April 11, 1996.
6 Such article, which appeared in the June 1998 issue, not only lists
the ratings of nine "BUDGET HOTELS," but also states that (emphasis
added): "The best budget hotels--many are motels, or low-rise
roadside lodging with ample parking--include Sleep Inn and Budgetel,
with a nightly rate of $50."
7 As requested by the Examining Attorney in his brief, we judicially
notice that Webster’s II New College Dictionary (1995) defines "inn"
in relevant part as "1. A lodging house serving food and drink to
travelers : HOTEL". It is settled that the Board may properly take
judicial notice of dictionary definitions. See, e.g., Hancock v.
American Steel & Wire Co. of New Jersey, 203 F.2d 737, 97 USPQ 330,
332 (CCPA 1953) and University of Notre Dame du Lac v. J. C. Gourmet
Food Imports Co., Inc., 213 USPQ 594, 596 (TTAB 1982), aff’d, 703 F.2d
1372, 217 USPQ 505 (Fed. Cir. 1983).
Ser. No. 75/089,246
6
Based on the foregoing, the common use
of BEST followed immediately by generic words
(including INNS) for a type of lodging gives
the respective marks essentially the same
meaning. The Examining Attorney submits that
the marks’ having ... essentially the same
meaning outweighs the differences between
them. Based on that similarity, the
[E]xamining [A]ttorney submits that
prospective lodgers are likely to have a
mistaken belief that the applicant is a
lower-price spin-off of the registrant ....
We agree with the Examining Attorney that, except for
the inclusion therein of the additional image or notion of a
budget-priced motel, the commercial impression projected by
applicant’s mark, which principally combines the laudatory term
"BEST" (in the stylized format "BE$T") with the generic
designation "BUDGET INNS," is essentially the same as that
engendered by registrant’s mark, which also primarily features
the laudatory term "BEST" in conjunction with the generic word
"INNS" and the subordinate, geographically descriptive words "OF
AMERICA". Thus, and even assuming that customers would in fact
notice the differences between the design elements of
registrant’s "BEST INNS OF AMERICA" and design mark and
applicant’s otherwise substantially similar "BE$T BUDGET INNS"
and design mark, it would not be unreasonable for them to assume
mistakenly that applicant’s motel services are a lower-priced or
budget version of the motel services provided by registrant and
that the same entity therefore provides or sponsors both. Any
possible doubt which we may have with respect to this conclusion
must, of course, be resolved in favor of the registrant. See In
Ser. No. 75/089,246
7
re Pneumatiques Caoutchouc Manufacture et Plastiques Kelber-
Columbes, 487 F.2d 918, 179 USPQ 729 (CCPA 1973).
Accordingly, we find that consumers familiar with
registrant’s "BEST INNS OF AMERICA" and design mark for motel
services would be likely to believe, upon encountering
applicant’s substantially similar "BEST BUDGET INNS" and design
mark for motel services featuring restaurants, that such
essentially identical services emanate from, or are otherwise
sponsored by or affiliated with, the same source.
Decision: The refusal under Section 2(d) is affirmed.
R. L. Simms
G. D. Hohein
H. R. Wendel
Administrative Trademark Judges,
Trademark Trial and Appeal Board