Historic Hotels International, Inc.v.National Trust for Historic Preservation in the United States

Trademark Trial and Appeal Board

Jul 31, 2008

No. 91168312 (T.T.A.B. Jul. 31, 2008)

Grendel

Mailed: July 31, 2008

Opposition No. 91168312

Historic Hotels
International, Inc.

v.

National Trust for
Historic Preservation in
the United States

Before Grendel, Rogers and Mermelstein, Administrative
Trademark Judges.

Grendel, Administrative Trademark Judge:

This case now comes up on opposer’s motion for summary
judgment. For the reasons discussed below, we grant
opposer’s motion.
In application Serial No. 78454061, applicant seeks
registration on the Principal Register of the mark HISTORIC
HOTELS (in standard character form) for goods identified in
the application as “printed publications, namely guidebooks,
cookbooks and directories of historic hotels.” The
application was filed on July 21, 2004 and is based on use
in commerce under Trademark Act Section 1(a), 15 U.S.C.
§1051(a), with September 29, 1988 alleged to be the date of
first use of the mark anywhere and August 1, 1989 alleged to
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
P.O. Box 1451
Alexandria, VA 22313-1451
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91168312
2
be the date of first use of the mark in commerce. In the
application, applicant claims ownership of prior Principal
Register Reg. No. 1957141 of the mark HISTORIC HOTELS OF
AMERICA (discussed below), and further claims, based on this
prior registration, that the HISTORIC HOTELS mark it now
seeks to register has acquired distinctiveness and therefore
is registrable under Trademark Act Section 2(f), 15 U.S.C.
§1052(f).
Opposer has opposed registration of applicant’s mark on
the grounds that the mark is merely descriptive of the goods
and thus barred from registration under Trademark Act
Section 2(e)(1), 15 U.S.C. §1052(e)(1), and that the mark
has not acquired distinctiveness and therefore is not
registrable under Trademark Act Section 2(f), 15 U.S.C.
§1052(f).1 In its answer to the notice of opposition,
applicant has denied the salient allegations thereof.
Opposer now has moved for summary judgment on its claim
that applicant’s mark is merely descriptive and has not
acquired distinctiveness and therefore is not registrable
pursuant to Section 2(f). Opposer’s motion is supported by
the declaration of opposer’s president Barry Preston and

1 Opposer also alleges as a ground of opposition that applicant
has not used the involved mark HISTORIC HOTELS in commerce except
as part of the mark HISTORIC HOTELS OF AMERICA, and that
registration therefore is barred under Trademark Act Section
1(a). This ground of opposition is not at issue in connection
with opposer’s summary judgment motion.

Opposition No. 91168312
3
exhibits thereto, and by the declaration of opposer’s
counsel Gary Krugman and exhibits thereto.
Applicant filed a brief in response to opposer’s motion
for summary judgment, but submitted no affidavits,
declarations or other evidence with its response brief.
Opposer filed a reply brief in support of its motion
for summary judgment.
Summary judgment is a pretrial device to dispose of
cases in which “the pleadings, depositions, answers to
interrogatories, and admissions on file, together with the
affidavits, if any, show that there is no genuine issue as
to any material fact and that the moving party is entitled
to judgment as a matter of law.” Fed. R. Civ. P. 56(c).
The purpose of the motion is judicial economy, that is, to
avoid an unnecessary trial where there is no genuine issue
of material fact and more evidence than is already available
in connection with the summary judgment motion could not
reasonably be expected to change the result in the case.
See, e.g., Pure Gold, Inc. v. Syntex (U.S.A.), Inc., 221
USPQ 151 (TTAB 1983), aff’d, 739 F.2d 624, 222 USPQ 741
(Fed. Cir. 1984).
A factual dispute is genuine if sufficient evidence is
presented such that a reasonable fact finder could decide
the question in favor of the nonmoving party. See Opryland
USA Inc. v. Great American Music Show, Inc., 970 F.2d 847,
Opposition No. 91168312
4
23 USPQ2d 1471 (Fed. Cir. 1992); Sweats Fashions Inc. v.
Pannill Knitting Co., Inc., 1560, 4 USPQ2d 1793 (Fed. Cir.
1987). The evidence of record must be viewed in a light
most favorable to the nonmoving party, and all justifiable
inferences are to be drawn in the nonmovant’s favor. See
Lloyd’s Food Products Inc. v. Eli’s Inc., 987 F.2d 766, 25
USPQ2d 2027 (Fed. Cir. 1993). All doubts as to whether any
factual issues are genuinely in dispute must be resolved
against the moving party. See Olde Tyme Foods Inc. v.
Roundy’s Inc., 961 F.2d 200, 22 USPQ2d 1542 (Fed. Cir.
1992).
The party seeking summary judgment has the initial
burden of establishing the absence of any genuine issues of
material fact and that it is entitled to judgment as a
matter of law. Fed. R. Civ. P. 56(c). In cases (such as
this one) where the ultimate burden of persuasion on an
essential element of the nonmovant’s case is on the
nonmovant, the moving party may establish its entitlement to
summary judgment by establishing that there is no evidence
on the basis of which the Board could rationally find for
the nonmovant on that essential element of the nonmovant’s
case at trial. See Celotex Corp. v. Catrett, 477 U.S. 317
(1986). If the moving party meets this initial burden, the
nonmoving party may not rest on mere denials or conclusory
assertions, but rather must proffer countering evidence, by
Opposition No. 91168312
5
affidavit or as otherwise provided in Fed. R. Civ. P. 56,
showing that there is a genuine factual dispute for trial.
Fed. R. Civ. P. 56(e). See Kellogg Co. v. Pack’Em
Enterprises Inc., 14 USPQ2d 1545 (TTAB 1990), aff’d, 951
F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991).
Initially, we reject applicant’s contention that we
should deny opposer’s summary judgment motion merely because
discovery in this case allegedly has not been completed. If
applicant required further discovery in order to adequately
respond to opposer’s summary judgment motion, applicant
should have filed a properly-supported motion seeking such
discovery pursuant to Fed. R. Civ. P. 56(f). See TBMP
§528.06. Applicant did not do so.
We also reject applicant’s contention that summary
judgment on the issue of acquired distinctiveness is
inappropriate merely because it is a question of fact.
Applicant cites no authority for this proposition. Acquired
distinctiveness is a question of fact,2 but that does not
preclude entry of summary judgment if it is shown that, on
this summary judgment record, there is no genuine dispute as
to that fact.
The issue before us is whether applicant’s mark
HISTORIC HOTELS, as applied to the “printed publications,

2 See Hoover Co. v. Royal Appliance Mfg. Co., 238 F.3d 1357, 57
USPQ2d 1720 (Fed. Cir. 2001).

Opposition No. 91168312
6
namely guidebooks, cookbooks and directories of historic
hotels” identified in applicant’s application, has acquired
distinctiveness and thus is registrable on the Principal
Register under Trademark Act Section 2(f).
We first note that, by seeking registration under
Section 2(f), applicant has conceded that its mark is merely
descriptive. Yamaha Int’l Corp. v. Hoshino Gakki Co. Ltd.,
840 F.2d 1572, 6 USPQ2d 1001 (Fed. Cir. 1988). In addition
to applicant’s concession, we find in any event that
HISTORIC HOTELS merely describes the subject matter of
applicant’s printed publications, and that it therefore is
merely descriptive under Trademark Act Section 2(e)(1).
See, e.g., In re Cox Enterprises Inc., 82 USPQ2d 1040 (TTAB
2007)(THEATL merely descriptive of printed matter of
interest to residents of and tourists and visitors to
Atlanta, Georgia); In re Taylor & Francis [Publishers] Inc.,
55 USPQ2d 1213 (TTAB 2000)(PSYCHOLOGY PRESS merely
descriptive of books in the field of psychology); In re
Gracious Lady Service, Inc., 175 USPQ 380 (TTAB 1972)(CREDIT
CARD MARKETING merely descriptive of publications in the
field of credit card marketing). Thus, the issue before us
is not whether applicant’s mark is inherently distinctive
(it is not), but whether the mark has acquired
distinctiveness and thus is registrable under Section 2(f).
We turn now to that issue.
Opposition No. 91168312
7
Trademark Rule 2.41(b), 37 C.F.R. §2.41(b), provides
that in determining whether a mark is registrable on the
Principal Register pursuant to the acquired distinctiveness
provisions of Trademark Act Section 2(f), the applicant’s
ownership of a prior Principal Register registration “of the
same mark” may be accepted as “prima facie evidence of
distinctiveness.” In its application and in this opposition
proceeding, applicant has based its Section 2(f) claim of
acquired distinctiveness solely on its ownership of
Registration No. 1957141.3 That registration, which itself
was issued pursuant to the acquired distinctiveness
provisions of Section 2(f), is of the mark depicted below

for goods and services identified in the registration as:

printed publications, namely guidebooks, cookbooks
and directories of historic hotels, in Class 16;

3 Reg. No. 1957141 was registered on February 20, 1996.
Applicant’s affidavits under Sections 8 and 15 were accepted and
acknowledged, and the registration has been renewed.

Opposition No. 91168312
8
promoting the services of the historic hotel
industry through the distribution of printed
promotional materials; and procurement, namely
purchasing hotel supplies for others, in Class 35;

development and dissemination of educational
materials in the field of historic hotels, in
Class 41; and

making hotel reservations for others, in Class 42.

Initially, we note that applicant did not make this
registration of record by submitting it with its response to
opposer’s summary judgment motion.4 For that reason alone,
and because applicant has presented no other evidence in
opposition to opposer’s motion for summary judgment, we
could find that applicant has failed to show that there is
any genuine issue of material fact sufficient to defeat
opposer’s summary judgment motion. However, in its summary
judgment briefs, opposer has treated the registration as
being of record and as being owned by applicant. We shall
do likewise, and shall assume that applicant would be able
to establish at trial that this registration is in effect
and is owned by applicant.
Applicant argues that, pursuant to Trademark Rule
2.41(b), its ownership of Reg. No. 1957141 constitutes prima
facie evidence that the mark it now seeks to register has
acquired distinctiveness. Opposer disputes this, arguing

4 We are able to consider the particulars of the registration
only because we ourselves have reviewed the registration as it
appears in the Office’s electronic database.
Opposition No. 91168312
9
that the registered special form mark with the wording
HISTORIC HOTELS OF AMERICA is not “the same mark” as the
standard character HISTORIC HOTELS mark applicant now seeks
to register, and that Trademark Rule 2.41(b) therefore is
unavailable to applicant for purposes of establishing
acquired distinctiveness.
We agree with opposer. The Federal Circuit has stated:

A proposed mark is the “same mark” as previously-
registered marks for the purpose of Trademark Rule
2.41(b) if it is the “legal equivalent” of such
marks. A mark is the legal equivalent of another
if it creates the same, continuing commercial
impression such that the consumer would consider
them both the same mark. Whether marks are legal
equivalents is a question of law subject to our de
novo review. No evidence need be entertained
other than the visual or aural appearance of the
marks themselves. Van Dyne-Crotty, Inc. v. Wear-
Guard Corp., 926 F.2d 1156, 1159, 17 USPQ2d 1866,
1868 (Fed. Cir. 1991).

In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807, 1812 (Fed. Cir. 2001).
We find as a matter of law that, on their face, the
registered mark HISTORIC HOTELS OF AMERICA (and design) and
the applied-for mark HISTORIC HOTELS are materially
different and not “the same mark,” as required by Trademark
Rule 2.41(b). Applicant’s ownership of the prior
registration therefore does not constitute prima facie

Opposition No. 91168312
10
evidence that applicant’s involved mark HISTORIC HOTELS has
acquired distinctiveness, under Trademark Rule 2.41(b).
Applicant bears the ultimate burden of proof at trial
on its claim of acquired distinctiveness. Yamaha Int’l
Corp. v. Hoshino Gakki Co. Ltd., supra. Because we have
found that applicant may not rely on its prior registration
as evidence of acquired distinctiveness under Trademark Rule
2.41(b), and because applicant on summary judgment has not
presented or even identified any other evidence which it
might present at trial to carry its burden of proving
acquired distinctiveness, we find that opposer is entitled
to summary judgment on its pleaded claim that applicant’s
mark lacks acquired distinctiveness. See Celotex Corp. v.
Catrett, supra.
In the alternative, even if we were to find as a matter
of law that applicant’s prior registered HISTORIC HOTELS OF
AMERICA mark and the HISTORIC HOTELS mark it now seeks to
register are “the same mark” and that applicant’s ownership
of the prior registration therefore constitutes prima facie
evidence of acquired distinctiveness under Trademark Rule
2.41(b), we find that the evidence opposer has submitted on
summary judgment is more than sufficient to rebut any such
prima facie showing of acquired distinctiveness. Opposer’s
summary judgment evidence establishes beyond dispute that
HISTORIC HOTELS is a highly descriptive designation as
Opposition No. 91168312
11
applied to applicant’s goods, and indeed that it is so
highly descriptive that applicant’s mere ownership of its
prior registration does not suffice to establish that the
mark has acquired distinctiveness.
Before we consider opposer’s summary judgment evidence,
we find that the highly descriptive nature of HISTORIC
HOTELS is evidenced by the fact that applicant itself uses
“historic hotels” in a highly descriptive manner in its
identification of goods in the present application, i.e.,
“printed publications, namely guidebooks, cookbooks and
directories of historic hotels.” (Emphasis added.)
Applicant likewise repeatedly uses “historic hotels” in a
highly descriptive manner in the identification of goods and
services in applicant’s prior registration, i.e., “printed
publications, namely guidebooks, cookbooks and directories
of historic hotels,” in Class 16, “promoting the services of
the historic hotel industry through the distribution of
printed promotional materials; and procurement, namely
purchasing hotel supplies for others,” in Class 35, and
“development and dissemination of educational materials in
the field of historic hotels,” in Class 41. (Emphasis
added.)
Opposer’s summary judgment evidence includes excerpts
of articles obtained from the NEXIS database, which further
establish beyond dispute that HISTORIC HOTELS is highly
Opposition No. 91168312
12
descriptive of applicant’s printed publications.” For
example (emphasis added):

The West slept here ... Five historic hotels, from
Los Angeles to Seattle, were built to lure and
fete the powerful. Today, they continue to
dazzle.”
(Sunset, Nov. 1995.) (Krugman Exh. 47.)

A comeback for San Francisco’s small, historic
hotels. ... These 14 small, historic hotels
aren’t for everyone.
(Sunset, April 1986.) (Krugman Exh. 48.)

The Gold Country’s historic hotels: a guide to 11
of the most enduring places to rest your head in
California’s Mother Lode.
(Sunset, April 1997.) (Krugman Exh. 49.)

Renovating Historic Hotels. ... Raffles
International has always taken very seriously the
restoration of our historic hotels.
(International Herald Tribune, October 26, 2001.)
(Krugman Exh. 112.)

After years located on the ground floor of La
Posada de Albuquerque, Jane Butel’s Southwestern
Cooking School is going dark. The cooking school
is closing after December due to the renovation of
the 1939 historic hotel.
(Albuquerque Journal, Nov. 25, 2005.) (Krugman
Exh. 79.)

Not just a cookbook, “The Driskill Hotel: Stories
of Austin’s Legendary Hotel/A Cookbook for Special
Occasions” relates the history of the historic
hotel, from its beginnings in 1886 to its current
upscale form.
(Austin American-Statesman (Texas), Feb. 23,
2006.) (Krugman Exh. 80.)

The shutoff is the city’s latest attempt in a
long-running battle to redevelop the historic
hotel at Sixth and Hamilton streets.
(The Morning Call (Allentown, PA), Aug. 31, 2007.)
(Krugman Exh. 84.)

Opposition No. 91168312
13
The century-old Hotel Conneaut is celebrating its
grand reopening, Conneaut Lake Park and American
Resort Management LLC said Thursday. ... American
Resort Management, of Erie, which operates hotels,
water parks, resorts and restaurants, recently was
chosen to operate the historic hotel.
(Pittsburgh Tribune Review, Aug. 31, 2007.)
(Krugman Exh. 85.)

(Outside, the charisma of the historic hotel is
still visible. But inside, much of the historic
charm is covered with plaster, vinyl and neglect.
(St. Petersburg Times (Florida), Aug. 30, 2007.)
(Krugman Exh. 87.)

Historic hotel changes hands – One of Lewistown’s
most historic structures, the Calvert Hotel, was
sold at an auction to a Stevensville couple for
$280,000.
(Great Falls Tribune (Montana), Aug. 28, 2007.)
(Krugman Exh. 89.)

Forests obscure interconnecting roads that lead to
the amenities in cities, towns and villages that
are never more than 30 miles away. Part of the
peninsula’s wilderness charm is the accessibility
of historic hotels, bed-and-breakfast inns,
motels, restaurants, shops and attractions.
(Chicago Tribune, Aug. 26, 2007.) (Krugman Exh.
91.)

(“There are no televisions, mini refrigerators or
coffee makers in the rooms so it forces you to get
out and explore,” she said. “It’s a historic
hotel located in what many people call the
‘Switzerland of North America.’”
(Great Falls Tribune (Montana), Aug. 26, 2007.)
(Krugman Exh. 92.)

(The Manning Hotel, a historic hotel in downtown
Kewsauqua, shows the high-water mark on July 13,
1993, as well as other high levels going back to
1903 on its brick exterior.
(Des Moines Register, Aug. 25, 2007.) (Krugman
Exh. 95.)

Built in 1926, the historic hotel in recent
decades has been used mainly as a layover
destination for United Airlines employees. City
Opposition No. 91168312
14
leaders have said they’re excited to see it re-
open as a hotel for tourists, business travelers
and families of residents.
(Inside Bay Area (California), Aug. 24, 2007.)
(Krugman Exh. 96.)

Historic Landmarks of Indiana provides guided
tours at the two historic hotels four times a day.
(The Miami Herald, Aug. 19, 2007.) (Krugman Exh.
99.)

We find that this evidence, if unopposed, would suffice
at trial to establish that HISTORIC HOTELS is not only
merely descriptive, but indeed is highly descriptive of
applicant’s publications which pertain to historic hotels.
Because applicant has submitted absolutely no evidence in
response to opposer’s motion for summary judgment, it has
failed to demonstrate that a genuine issue for trial exists
as to the highly descriptive nature of its mark, and has
failed to show that trial of the issue would result in a
different record than that now before the Board.
We further find that opposer’s unchallenged evidence of
the highly descriptive nature of applicant’s mark is
sufficient to rebut the prima facie presumption of acquired
distinctiveness which arises merely from applicant’s
ownership of its prior registration. It is settled that the
greater the degree of a mark’s descriptiveness, the greater
the burden the applicant faces in establishing acquired
distinctiveness. See Yamaha Int’l Corp. v. Hoshino Gakki
Co. Ltd., supra. Faced with opposer’s summary judgment
Opposition No. 91168312
15
evidence showing that the mark is highly descriptive, it was
incumbent upon applicant to come forward with countering
evidence showing that there is a genuine issue for trial as
to whether its mark has acquired distinctiveness
notwithstanding the highly descriptive nature of the mark.
Applicant failed to present any such other evidence,
choosing instead to rely merely on its ownership of its
prior registration.
In claiming that its mark is registrable under
Trademark Act Section 2(f), applicant has the ultimate
burden of proving by a preponderance of the evidence that
its mark has acquired distinctiveness. Yamaha Int’l Corp.
v. Hoshino Gakki Co. Ltd., supra. On summary judgment,
opposer has the initial burden of establishing that there is
no genuine factual dispute that applicant’s mark has not
acquired distinctiveness. Opposer may meet this burden by
establishing that there is no evidence upon which the Board
at trial could rationally base a finding that the mark has
acquired distinctiveness. Celotex Corp. v. Catrett, supra.
If opposer carries that burden, then applicant may defeat
opposer’s summary judgment motion only by showing that in
fact there is evidence which applicant could present at
trial upon which the Board might rationally base a finding
that the mark has acquired distinctiveness. For the reasons
discussed above, we find that opposer has met its initial
Opposition No. 91168312
16
burden of showing that there is an absence of evidence
sufficient to support applicant’s claim of acquired
distinctiveness. We further find that applicant has failed
to counter opposer’s showing with a showing of its own that
there is evidence applicant could produce at trial upon
which a reasonable factfinder might base a finding that the
mark has acquired distinctiveness.
In summary, we find that there is no genuine issue of
material fact for trial, and that opposer is entitled to
judgment as a matter of law on its claim that applicant’s
merely descriptive mark has not acquired distinctiveness and
thus is not entitled to registration pursuant to Trademark
Act Section 2(f).
We also find that there is no genuine issue of material
fact as to opposer’s standing to oppose registration of
applicant’s mark. In his summary judgment declaration,
opposer’s president Barry Preston avers that opposer “uses
the term ‘Historic Hotels’ as part of its domain name
‘historichotels.com.’ Opposer, on its travel related web
site, descriptively refers to the terms ‘Historic Hotels,’
‘Hotels,’ and ‘Historic.’” (Preston Decl. at ¶2.) Mr.
Preston also averred that opposer “has a continuing interest
in developing, among other things, web based guides and
directories of historic hotels and, therefore, Opposer has a
continuing interest in using the descriptive term ‘historic
Opposition No. 91168312
17
hotels’ in connection with its travel related web-based
business to refer to guides to and directories of historic
hotels, namely, hotels having historical significance.”
(Preston Dec. at ¶5.) We find that these undisputed
averments suffice to establish opposer’s standing in this
case. Applicant does not contend otherwise.
Because opposer has established that there is no
genuine issue of material fact as to its standing or as to
its claim that applicant’s merely descriptive mark has not
acquired distinctiveness, and because we find that opposer
is entitled to judgment as a matter of law in this
opposition, we grant opposer’s motion for summary judgment.
Fed. R. Civ. P. 56(c).
Decision: The opposition is sustained.