Jonathan M. Kellyv.Citystay Hotels, LLC

Trademark Trial and Appeal Board

Apr 28, 2010

No. 92048998 (T.T.A.B. Apr. 28, 2010)

Mailed: April 28, 2010
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Jonathan M. Kelly
v.
Citystay Hotels, LLC
_____

Cancellation No. 92048998
_____

Duy Thai for Jonathan M. Kelly.

Gregory J. Tubeck for Citystay Hotels, LLC.
_____

Before Hairston, Holtzman and Walsh, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

A petition has been filed by Jonathan M. Kelly
(petitioner) to cancel a registration for the mark CITYSTAY
HOTELS owned by Citystay Hotels, LLC (respondent) for “hotel
lodging.”1
As grounds for cancellation, petitioner asserts that it
is the owner of application Serial No. 78871523 for the mark

1 Registration No. 3388869, issued February 26, 2008 from an
application filed November 17, 2005, claiming first use and first
use in commerce on November 14, 2005. The term “HOTELS” has been
disclaimed apart from the mark as shown.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Cancellation No. 92048998
2
CITISTAY and that registration of its application has been
refused in view of respondent’s registration; that
respondent did not offer hotel lodging as of November 17,
2005, the filing date of the application which issued into
respondent’s registration; and that “the declaration of
actual use in commerce contained in the original application
was false and fraudulent.” (¶6)
Respondent, in its answer to the petition to cancel,
denied the essential allegations thereof.
Accelerated Case Resolution (ACR)
On November 18, 2009, the parties filed a joint request
to resolve this proceeding by way of Accelerated Case
Resolution (ACR), accompanied by a Stipulation of Facts.
Following this submission, the Board advised the parties
that additional stipulations would be required before the
Board would grant the request to resolve the case via ACR.
In response, the parties filed additional stipulations, and
the Board subsequently convened a telephone conference with
the parties to discuss ACR procedures and to clarify certain
aspects of the petition to cancel. During this conference,
the Board noted that petitioner’s pleading of fraud was
insufficient as a fraud claim, and the parties agreed to
deem the pleading as a claim of non-use, i.e., respondent
failed to make bona fide use of its mark in commerce prior
to the filing of its use-based application. The Board also
Cancellation No. 92048998
3
found that the parties had met the requirements for
proceeding under ACR and, thus, accepted the case for
resolution via ACR, and set a briefing schedule.
The Record
By operation of Trademark Rule 2.122, 37 C.F.R. §2.122,
the record in this case consists of the pleadings and the
file of the involved registration. As previously noted, the
parties filed a stipulation of facts. Neither party,
however, submitted any other evidence.
Petitioner and respondent filed main briefs on the
case, and petitioner filed a reply brief.
Petitioner’s Standing
Standing is a threshold requirement that must be
established by a plaintiff in every case. The purpose of
the standing requirement is to prevent mere intermeddlers
from initiating proceedings. Thus, to meet this
requirement, a plaintiff need only show that it has a real
interest in the outcome of the proceeding. See Ritchie v.
Simpson, 170 F.2d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999).
Petitioner has not introduced any evidence to prove his
standing, and respondent has not stipulated to petitioner’s
standing in the stipulation of facts. Nevertheless, we find
that petitioner’s standing has been established by
statements made by respondent in its brief.
As stated by TBMP §704.06(b)(2d ed. rev. 2004):

Cancellation No. 92048998
4
Factual statements made in a party’s brief on the
case can be given no consideration unless they are
supported by evidence properly introduced at
trial. Statements in a brief have no evidentiary
value, except to the extent that they may serve as
admissions against interest.

Respondent in its brief has admitted that petitioner has
standing to bring the petition to cancel by admitting that
petitioner’s “application Serial No. 78,871,523 has been
suspended due to CSH [respondent] holding filing seniority
of a conflicting registered mark” (Brief, pp. 1-2). In
light of such admission, petitioner properly notes in his
initial brief that his application has been suspended, that
“the Examining Attorney cited [respondent’s] then pending
application which ripened into Registration No. 3,388,869”
and “[b]ecause the subject registration blocks
[petitioner’s] application,” petitioner has standing.
Standing may be found when the plaintiff has been refused
registration of its mark because of defendant’s
registration. See Cerveceria Modelo S.A. de C.V. v. R.B.
Marco & Sons, Inc., 55 USPQ2d 1298, 1300 (TTAB 2000). Under
the circumstances, we find that petitioner has standing.
Non-use
We turn then to the issue of whether or not
respondent’s mark CITYSTAY HOTELS was in use in connection
with hotel lodging at the time of the filing of the
application which issued into the involved registration. In
view of the parties’ stipulation of facts, the facts in this
Cancellation No. 92048998
5
case are clear. The following are the relevant facts
pertaining to respondent’s alleged use of the mark CITYSTAY
HOTELS in connection with hotel lodging at the time of the
filing of the application on November 15, 2005 and to the
present:
1. On and before November 17, 2005, CityStay
Hotels, LLC (“CSH”) did not operate any commercial
“brick and mortar” establishment commonly known as
a “hotel” providing lodging or other temporary
residency for travelers and the public.

2. To the present, CSH has never operated any
commercial “brick and mortar” establishment
commonly known as a “hotel” providing lodging or
other temporary residency for travelers and the
public.

3. No person or entity related to CSH has ever
operated any commercial “brick and mortar”
establishment commonly known as a “hotel”
providing lodging or other temporary residency for
travelers and the public under the CITYSTAY HOTELS
or CITISTAY HOTELS mark

4. CSH has never licensed to any third party the
rights to provide lodging or other temporary
residency for travelers and the public under the
CITYSTAY HOTELS or CITISTAY HOTELS mark.

5. When CSH stated in its November 17, 2005
Section 1(a) trademark application that it was
already using the CITYSTAY HOTELS or CITISTAY
HOTELS mark in commerce for “hotel lodging,” it
meant that CSH paid money to GoDaddy, Inc., and
GoDaddy, Inc. provided webhosting service to CSH;
CSH paid money to Shan Parker, and Shan Parker
designed CSH’s website; CSH paid money to Rapture
Networks, and Rapture Networks built CSH’s
technology and booking servers; and CSH promoted
the CITYSTAY HOTELS or CITISTAY HOTELS mark in
press releases, business agreements, marketing
pitches, speeches and branding strategies.

6. Since November 17, 2005, CSH’s use in commerce
of the CITYSTAY HOTELS or CITISTAY HOTELS mark
Cancellation No. 92048998
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consisted of CSH paying money to interior
designers Qubed Design Studio of New York and
ArchDesign Studio of Serbia, and these interior
designers provided hotel design services to CSH;
CSH and Peter Fillat Architects of Baltimore,
Maryland collaborating to design a hotel
prototype, with no money exchanged; CSH paying
money to Shan Parker of Indianapolis, Indiana, and
numerous freelance designers in India, and Mr.
Shan Parker and the freelance designers created
websites and marketing campaigns for CSH; CSH
participating, lecturing, and speaking at
hospitality trade shows in New York City and
Miami; and CSH negotiating with Wyndham Hotels
Worldwide on potential collaborations.”

Stipulation of Facts, pp. 1-2.
Petitioner maintains that it is clear from the above
facts that respondent did not have any hotels at the time of
the filing of the application and, thus, respondent’s mark
CITYSTAY HOTELS was not in use in connection with hotel
lodging. Respondent, on the other hand, maintains that
“[b]rick and mortar establishments are not necessary to show
hotel(s), hotel services or hotel lodging commerce
activity,” and that “the exchange of money or some other
trade in association with the mark is enough to satisfy
commerce.” (Brief, p. 6). Relying on definitions of the
words “commerce” and “trade” from the online “Lectric Law
Library,” respondent argues that such definitions show that
it “has successfully used the mark in commerce.” (Brief, p.
3).
Insofar as respondent contends that brick and mortar
establishments are not necessary to show that a party is
Cancellation No. 92048998
7
rendering hotel lodging services, such contention is not
well taken. We judicially notice the following relevant
definitions of the words “hotel” and “lodging” from the
Random House Online Dictionary (2010):
hotel: “a commercial establishment offering
lodging to travelers and sometimes to permanent
residents, and often having restaurants, meeting
rooms, stores, etc., that are available to the
general public.”

lodging: “a temporary place to stay; temporary
quarters.”2

Based on these definitions, we find that hotel lodging means
a commercial establishment offering persons a temporary
place to stay.
Furthermore, in determining whether or not respondent’s
mark was in use in connection with hotel lodging as of the
filing of the application, it is the definition of “use in
commerce” in Section 45 of the Trademark Act that is
controlling; not the definitions of “commerce” and “trade”
from the online “Lectric Law Library.” In this regard, the
Trademark Act states:
“Section 45. Use in commerce. The term ‘use in
commerce’ means the bona fide use of a mark in the
ordinary course of trade, and not made merely to
reserve a right in a mark. For the purposes of
this Act a mark shall be deemed to be used in
commerce … (b) on services when it is used or
displayed in the sale or advertising of services
and the services are rendered in commerce, or the

2 The Board may take judicial notice of dictionary evidence.
University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co.,
213 USPQ 594, 596 (TTAB 1992), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983).
Cancellation No. 92048998
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services are rendered in more than one State or in
this and a foreign country and the person
rendering the services is engaged in commerce in
connection therewith.”

In Intermed Communications v. Chaney, 197 USPQ 501, 508
(TTAB), the Board discussed what constitutes use of a
service mark in commerce:
Although the definition of use of a service mark
in Section 45 is less concrete than the definition
of use of a trademark, it is nonetheless clear
that, at the very least, there must be an open and
notorious public offering of the services to those
for whom the services are intended. See Computer
Food Stores Inc. v. Corner Store Franchises, Inc.
176 USPQ 535 (TTAB 1973); Travelers Petroleum,
Inc. v. Selfway, Inc., 195 USPQ 578 (TTAB 1977).
In addition, mere publicity about services to be
rendered in the future does not lay a foundation
for an application. The statute absolutely
requires not only the display of the mark in the
sale or advertising of the services, but also the
rendition of those services in order to constitute
use of the service mark in commerce.

Applying these principles to the case before us, we
find that respondent’s mark CITYSTAY HOTELS was not in use
in connection with hotel lodging at the time of the filing
of the application. It is not enough that respondent
contracted with third parties to create a website and build
technology and booking servers, or even that applicant
advertised and promoted hotel lodging services under the
mark CITYSTAY HOTELS. As the Board held in The Greyhound
Corporation, et al. v. Armour Life Insurance Company, 214
USPQ 473, 474 (TTAB 1982):
With respect to applicant’s use of the mark, it is
well settled that advertising of a service,
Cancellation No. 92048998
9
without performance of a service, will not support
registration. For example, the announcement of a
future service does not constitute use as a
service. The use in advertising which creates a
right in a service mark must be advertising which
relates to an existing service which has already
been offered to the public. [citation omitted]

Thus, it was necessary that respondent actually render
hotel lodging at the time of the filing of the application.
Clearly, respondent was not doing so inasmuch as respondent
has stipulated that neither it nor any related entity
operated a commercial establishment offering persons a
temporary place to stay.
In view of the foregoing, we find that respondent’s
mark CITYSTAY HOTELS was not in use in connection with hotel
lodging at the time of the filing of the application.
Accordingly, the application and resulting involved
registration are void ab initio.
Decision: The petition to cancel on the ground of
non-use is granted and the registration will be canceled in
due course.