My Place Hotels of America, LLC

Trademark Trial and Appeal Board

Feb 27, 2013

No. 85381336 (T.T.A.B. Feb. 27, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
February 27, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re My Place Hotels of America, LLC
_____

Serial No. 85381336
_____

Marsha G. Gentner of Jacobson Holman Pllc for My Place Hotels of America, LLC.
Barney L. Charlon, Trademark Examining Attorney, Law Office 104 (Chris
Doninger, Managing Attorney).
_____

Before Holtzman, Ritchie and Wolfson, Administrative Trademark Judges.

Opinion by Wolfson, Administrative Trademark Judge:
My Place Hotels of America, LLC (“applicant”) seeks registration on the
Principal Register of the mark MY PLACE (in standard characters) for services
ultimately described in the application as “hotel and motel services” in
International Class 43.1
The trademark examining attorney has refused registration of applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), having

1 Application Serial No. 85381336 was filed on July 26, 2011, based on an allegation of
applicant’s bona fide intent to use the mark in commerce.
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Serial No. 85381336

3

design,4 THE FOUR SEASONS,5 FOUR SEASONS,6 PALM,7 and PALMS PLACE;8
and copies of two unpublished Board decisions, In re Captain Morgan’s Retreat,
Ltd., Serial No. 74554300 (TTAB March 26, 1998) and In re Riviera Operating
Corporation, Serial No. 74646349 (TTAB January 12, 1999). Applicant further
submitted copies of web pages from retailers Costco, Target, Wal-Mart and Meijer
to show that unrelated products such as “jewelry, pots and pans, auto parts, and
grocery store services [are provided] in a single location of a single source.”9
Both the applicant and the examining attorney have asked us to take judicial
notice of the following dictionary definitions attached to their respective briefs,
which we admit.10
MY : pronoun, a form of the possessive case of I used as
an attributive adjective.
PLACE : a space, area, or spot set apart or used for a
particular purpose: a place of worship; a place of
entertainment; any building or area set aside for a specific
purpose.
RESTAURANT : an establishment where meals are
served to customers.
HOSPITALITY : food, drink, and entertainment given to
customers by a company or organization; a hospitality
suite/room/tent; the hospitality industry (=hotels,
restaurants etc.).

4 Reg. No. 1051534.
5 Reg. No. 936802.
6 Reg. No. 2296226.
7 Reg. No. 2311431.
8 Reg. No. 3698800.
9 Applicant’s Brief, p. 11.
10 Judicial notice may be taken of dictionary evidence. University of Notre Dame du Lac v.
J. C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff'd, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).

Serial No. 85381336

4

HOTEL : a building where you pay to stay in a room and
have meals.
Applicant further seeks admission of a listing of services from the USPTO
“Trademark Acceptable Identification of Goods and Services” database showing that
“restaurant and hotel services” are included. As no objection to admission of this
listing was made, we admit it into the record.
Applicable Law
Our determination under Trademark Act § 2(d) is based on an analysis of the
probative facts in evidence that are relevant to the factors bearing on a likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973); see also Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie
Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the
evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.” Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also In
re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB 1999).
A. Comparison of the Marks
In comparing the marks, we must consider the marks in their entireties as to
appearance, sound, connotation and commercial impression, to determine the
similarity or dissimilarity between them. Palm Bay, 73 USPQ2d at 1692. The test,
Serial No. 85381336

5

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 terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective marks is likely to result.
In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). On
the other hand, different features may be analyzed to determine whether the marks
are similar. Price Candy Company v. Gold Medal Candy Corporation, 220 F.2d 759,
105 USPQ 266, 268 (CCPA 1955). In fact, 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 the ultimate conclusion rests on a consideration of the marks in
their entireties. In re National Data Corp., 224 USPQ at 751. The focus is on the
recollection of the average purchaser, who normally retains a general rather than a
specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190
USPQ 106 (TTAB 1975).
Applicant’s mark is MY PLACE. The registrant’s mark shares the wording of
applicant’s mark and adds a design element and the designation “& CO.” The
examining attorney argues that registrant’s mark is dominated by the term MY
PLACE; that the other components are weak; and that overall, the marks are
confusingly similar. Applicant argues that consumers will not focus on the term MY
PLACE because it is weak in relation to restaurant services; that it is inappropriate
to ignore the additional wording (& CO.) and the design feature of registrant’s
Serial No. 85381336

6

mark; and that when viewed in its entirety, applicant’s mark is not likely to cause
confusion with registrant’s mark.
We agree with the examining attorney that the term MY PLACE is the
dominant feature of registrant’s mark. It is the first literal portion of the mark and
is the one most likely to be spoken and remembered by purchasers, especially given
the tendency of consumers to shorten marks. See In re Abcor Dev. Corp., 588 F.2d
511, 200 USPQ 215, 219 (CCPA 1978) (J. Rich, concurring); Presto Prods., Inc. v.
Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988). The term MY PLACE
also appears larger in size than the other wording and is prominently centered
inside the oval background design. Contrary to applicant’s assertion, we find that
the term MY PLACE is not weak when applied to restaurant services; the
dictionary definitions of “my” and “place” do not imply otherwise. The term MY
PLACE, for an establishment that caters to others, carries a sense of familiarity,
hospitality, and comfort that is typical when referring to one’s home as “my place.”
The impression is akin to that of a proprietor announcing that “my place is your
place.” This is classic suggestive mark usage.
The third-party registrations submitted by applicant of marks that use the
term PLACE do not prove that the term MY PLACE is weak for restaurant
services.11 First, the registrations that pertain to other goods or services, such as

11 Applicant’s submission of pending applications is of no probative value. Pending
applications are evidence only that the applications were filed on a certain date. Nike Inc.
v. WNBA Enterprises LLC, 85 USPQ2d 1187, 1193 n.8 (TTAB 2007); Interpayment Services
Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). Moreover, without the
record histories of the applications, we do not know which ones have been refused, which
Serial No. 85381336

7

the mark MY PLACE for “child care services,”12 MY PLACE for “perfume for the
home, candles, and reed diffusers of scented oils used to dispense fragrances in the
home,”13 and MYNEWPLACE for “real estate listing services,”14 have no bearing on
the issues at hand. The fact that a term has been registered for goods or services
that bear no relationship to the goods or services under consideration tells us
nothing about how prospective purchasers of the relevant goods or services will
perceive the marks at issue. As for the remainder of the third-party marks
submitted by opposer, none of them, other than the marks at issue here, include the
phrase “MY PLACE.” The vast majority modify the word “place” with a person’s
name or with a descriptive modifier (adjective), such as in MYFRIEND’SPLACE,15
HAROLD’S PLACE,16 THE LOCAL PLACE,17 KOUNTRY KITCHEN SOULFOOD
PLACE,18 or MARKETPLACE GRILL.19 While these registrations may thus show
that the term PLACE has a suggestive meaning, they do not show that the term MY
PLACE has become diluted such that applicant’s mark would be distinguishable
from the cited mark on the basis of the additional features in the cited mark. The
term MY PLACE is identical in both marks, and is not weak.

are based on the applicant’s intention to use its mark and which may be subject to consent
agreements or other limitations bearing on the issues in this case.
12 Reg. No. 3408554, registered April 8, 2008.
13 Reg. No. 3306303; registrant October 9, 2007.
14 Reg. No. 3546733; registered December 16, 2008.
15 Reg. No. 3031096; registered December 20, 2005.
16 Reg. No. 3026800; registered December 13, 2005.
17 Reg. No. 2875012; registered August 17, 2004.
18 Reg. No. 3928289; registered March 8, 2011.
19 Reg. No. 3053624; registered January 31, 2006.
Serial No. 85381336

8

On the other hand, the wording “& CO.” is a relatively weak component of
the overall mark in the cited registration. Because business entity designations,
such as “company” and its abbreviation, “co.,” merely indicate a party’s entity type,
they generally do not function to indicate the source of goods or services, and are
therefore accorded little weight in a likelihood of confusion analysis. See In re Paint
Products Co., 8 USPQ2d 1863 (TTAB 1988), [“PAINT PRODUCTS CO” held
incapable of identifying and distinguishing paints], and In re E.I. Kane, Inc., 221
USPQ 1203 (TTAB 1984), [“OFFICE MOVERS, INC.” held incapable of identifying
and distinguishing office facilities moving services]. The design is also a relatively
weak component. It is likely to be seen simply as a background or “carrier” of the
wording in the mark, inasmuch as it consists of common geometric shapes and
completely surrounds the wording in an oval-shaped “frame.” Moreover, even
where design elements are not considered carriers, the literal portions of marks,
rather than any design elements, are generally regarded by consumers as the
principal source-signifying portion of the mark, again because it is the wording that
purchasers would use to refer to or request the goods. See In re Kysela Pere et Fils
Ltd., 98 USPQ2d 1261, 1267 (TTAB 2011) (citing In re Dixie Rests. Inc., 41 USPQ2d
at 1534)); In re Appetito Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987)
(wording often dominates over design). See also, Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983) (finding
GIANT to be the dominant portion of a mark consisting of the words GIANT
Serial No. 85381336

9

HAMBURGERS with a large background design, even though the wording GIANT
HAMBURGERS was disclaimed).
We also note that applicant’s mark is not limited to a particular font, color,
style or size. See Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98
USPQ2d 1253, 1259 (Fed. Cir. 2011) (standard character marks are not limited to
any particular presentation); Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1847-48 (Fed. Cir. 2000); Phillips Petroleum Company v. C.J. Webb,
Inc., 442 F.2d 1376, 170 USPQ 35, 36 (CCPA 1971). Because applicant’s mark MY
PLACE is presented in standard character form, the wording could reasonably be
displayed in the font and style of registrant’s mark, thereby increasing the visual
similarity of the two marks.
For these reasons, the du Pont factor of the similarities of the marks weighs
heavily against applicant.
B. Comparison of the Services
We next turn our attention to a comparison of the similarity or dissimilarity
and nature of the services described in the applications and registrations. We base
our evaluation on the services as they are identified in the registration and
application. Octocom Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See also Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). It is settled
that it is not necessary that the respective goods be identical or even competitive in
order to find that they are related for purposes of our likelihood of confusion
analysis. That is, the issue is not whether consumers would confuse the services
Serial No. 85381336

10

themselves, but rather whether they would be confused as to the source of the
services. See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). The services need only
be sufficiently related that consumers would be likely to assume, upon encountering
the goods under similar marks, that the services originate from, are sponsored or
authorized by, or are otherwise connected to the same source. See In re Martin’s
Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984); In re
Melville Corp., 18 USPQ2d 1386 (TTAB 1991).
The examining attorney has produced ample evidence that hotels and motels
provide restaurants under a single mark. For example, the following websites
advertise both hotel and restaurant services under the same mark:
At www.webersinn.com, Weber’s Inn advertises “Weber’s
Restaurant and Boutique Hotel” at the same street
address in Ann Arbor, Michigan;20
At www.panamahotel.com, Panama Hotel Restaurant and
Inn advertises itself as a “charming and historic bed&
breakfast inn that includes a popular neighborhood
restaurant”;21
At http://oldtowncosmopolitan.com, The Cosmopolitan
Restaurant & Hotel promotes “Super Sunday @ Cosmo –
Just Good Food & Drink & Great Music – All Day and
Into the Night!” as well as a 10-room bed and breakfast
hotel in Old Town, San Diego, California;22
At www.redcaboosemotel.com, The Red Caboose Motel &
Restaurant advertises a “unique train lodging
experience”; “46 sleeping cars, dining and on-site family

20 Attached to Final Office action, dated February 8, 2012.
21 Id.
22 Id.
Serial No. 85381336

11

activities;” the web page also shows a link to the
restaurant;23
At www.jaspersmaine.com, Jasper’s Restaurant & Motel
advertises motel and restaurant services, with links to
each;24 and
At www.northlandmotel.com, the Northland Motel &
Restaurant offers rooms, suites or “2 BR bungalows
with/without kitchens” and a “bar/restaurant is available
on premise.”25
In addition, the examining attorney has submitted numerous copies of use-
based, third-party registrations for marks covering both hotel/motel services and
restaurant services. These serve to suggest that the services are of a type which
may emanate from a single source. In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1988), aff’d, 864 F.2d 149 (Fed. Cir. 1988). See also, In re
Davey Prods. Pty Ltd., 92USPQ2d 1198, 1203 (TTAB 2009); In re Albert Trostel &
Sons Co., 29 USPQ2d 1783, 1785 (TTAB 1993); and TMEP §1207.01(d)(iii).
Based on the evidence, we find that hotel and motel services such as
applicant’s, and restaurant services such as registrant’s, are of a type that
frequently derive from the same source. See, e.g., In re The Summit Hotel Corp.,
220 USPQ 927 (TTAB 1983) (restaurants and hotels offer complementary services
to the same general class of consumers); Venture Out Properties LLC v. Wynn
Resorts Holdings LLC, 81 USPQ2d 1887, 1893 (TTAB 2007) (hotel services and
restaurant, bar, and cocktail lounge services, inter alia, are of a type that may
emanate from a single source in connection with the same mark); In re Binion, 93

23 Id.
24 Id.
25 Id.
Serial No. 85381336

12

USPQ2d 1531, 1535 (TTAB 2009) (close relationship between hotel and bar
services, inter alia, and restaurant services).
Applicant argues that because the USPTO has allowed three pairs of
registrations for arguably similar marks to co-exist on the Principal Register for
restaurants on the one hand, and hotel or motel services on the other hand, that the
Office recognizes that the same mark can be registered for restaurants as for hotels
and motels. The examining attorney has shown that in one case (with respect to the
mark FOUR SEASONS and THE FOUR SEASONS), the parties entered into a
consent agreement that allowed the marks to co-exist on the register.26 As for the
pair of marks: RIVIERA and , these were the subject of the unpublished
case In re Riviera Operating Corp., noted supra, wherein the Board recognized that
hotel and restaurant services are related but “notwithstanding any relatedness in
the services,” stated that it “cannot overlook the fact” that the marks had co-existed
for 27 years. We do not have such circumstances here. With respect to the marks
PALM PLACE for “hotel, bar and restaurant services” and PALM for “restaurant
services,” there is nothing in the record beyond the two registration certificates to
indicate the circumstances surrounding registration of the two marks. It is well-
established that each case presents a unique set of facts and must be decided in
light of the evidence of record at the time registration is sought. Thus, we will not
speculate as to the circumstances extant at the time these marks registered. We

26 See In re Four Seasons Hotels Ltd., 987 F.2d 1565, 26 USPQ2d 1071, 1072 (Fed. Cir.
1993) (holding that the agreement between the parties carries “great weight” in the
likelihood of confusion analysis).
Serial No. 85381336

13

hasten to add, however, that even were we to consider the co-existence of this single
pair of third-party marks, such is hardly sufficient to establish that the services are
unrelated. Finally, the Board is not bound by prior decisions of examining
attorneys. See In re Nett Designs Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001); In re Davey Products Pty Ltd., 92 USPQ2d 1198 (TTAB 2009) (“[I]t is
settled that the fact that there already may be two confusingly similar marks co-
existing on the Register and owned by different owners, which arguably should not
have registered over each other, does not relieve the Board of its duty to determine
the registrability of the applicant’s mark on the record currently before it.”).
Applicant further cites an additional unpublished TTAB decision in support
of its contention that the Board has determined that the services are unrelated, In
re Captain Morgan’s Retreat, Ltd., Serial No. 74554300 (TTAB March 26, 1998). In
that case, however, the Board noted that no evidence had been presented regarding
the relatedness of resorts and restaurants: “The Examining Attorney has presented
absolutely no evidence showing that resorts use their names to likewise name the
restaurant within the resorts.” Here, the examining attorney has carefully shown
that hotels and motels do use their names to “likewise name the restaurant” within
the hotel/motel. Accordingly, Captain Morgan’s Retreat is inapposite.
Finally, as noted above, applicant submitted copies of web pages from several
“big box” retailers purporting to show that unrelated goods may be sold under the
same roof. Suffice it to say, this argument is unavailing. First, the goods shown to
be for sale by the web pages - jewelry, pots and pans, auto parts, and grocery store
Serial N

services
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the rela
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care,”27
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27 Applic
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ant’s Brief,
36
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p. 15.
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ting purch

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Serial No. 85381336

15

In view of these findings, applicant’s registration of the mark MY PLACE is
likely to cause confusion.
Decision: The refusal to register applicant’s mark MY PLACE is affirmed.