Noah’s Inc.v.Noah Corporation

Trademark Trial and Appeal Board

Jul 10, 2018

No. 91223629 (T.T.A.B. Jul. 10, 2018)

Oral Hearing: April 11, 2018 Mailed: July 10, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Noah’s Inc.
v.
Noah Corporation
_____

Opposition No. 91223629
_____

Christine Lebron-Dykeman and Michael Gilchrist of McKee Voorhees & Sease PLC,
for Noah’s Inc.

Jared Inouye, Daniel K. Brough and Eric Jeppsen of Bennett Tueller Johnson &
Deere, for Noah Corporation.
_____

Before Cataldo, Wellington and Greenbaum,
Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, Noah Corporation, seeks registration on the Principal Register of the
mark NOAH’S, in standard characters, for
Providing specialized facilities for business meetings, business
receptions, and networking events; providing facilities for trade
exhibitions in International Class 35; and

Providing general purpose facilities for fairs and exhibitions; rental of
banquet and social function facilities for special occasions, namely,
weddings, wedding receptions, rehearsal dinners, bar mitzvahs, bat
mitzvahs, birthday parties, social receptions and events, anniversary
parties, fundraising events, business receptions, political events and
rallies, quinceañeras, wakes, memorial services, funeral services, trade
This Opinion Is Not a
Precedent of the TTAB
Opposition No. 91223629
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shows, bachelor parties, bachelorette parties, fashion shows, networking
events, training seminars conventions, conferences, and social meetings
in International Class 43.1

In its amended notice of opposition,2 Opposer, Noah’s Inc., opposes registration
under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), asserting priority and a
likelihood of confusion with its mark NOAH’S ARK, registered on the Principal
Register as displayed below:
;3
NOAH’S ARK in standard characters;4 and
,5 all reciting “restaurant and bar services” in International Class
42. In addition, Opposer also asserts that it has made common law use of NOAH’S
ARK and NOAH’S in connection with

1 Application Serial No. 86258328, filed April 21, 2014, alleging October 28, 2008 and
September 25, 2003 as the respective dates of first use of the mark in commerce in connection
with the Class 35 and Class 43 services.
2 21 TTABVUE.
3 Registration No. 1961874, issued March 12, 1996. Trademark Act §§ 8 and 15 affidavits
accepted and acknowledged. Second renewal.
4 Registration No. 2068328, issued on June 10, 1997. “Registration limited to the area
comprising the state of Iowa pursuant to the decree of the U.S. District Court for the Eastern
District of Missouri, dated March 31, 1983, C.A. No. 81-1526C(2), as affirmed by the U.S.
Court of Appeals for the Eighth Circuit, order dated March 6, 1984, Nos. 83-1544 and 83-
1610.” Trademark Act §§ 8 and 15 affidavits accepted and acknowledged. Second renewal.
5 Registration No. 2092446, issued on September 2, 1997. “Registration limited to the area
comprising the state of Iowa pursuant to the decree of the U.S. District Court for the Eastern
District of Missouri, dated March 31, 1983, C.A. No. 81-1526C(2), as affirmed by the U.S.
Opposition No. 91223629
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restaurant and bar services and banquet and social function facilities
for weddings, wedding receptions, rehearsal dinners, bachelor parties,
bachelorette parties, birthday parties, social receptions and events,
anniversary parties, business receptions, networking events, sales
seminars, political events and rallies, and social meetings;6

and further pleads ownership of an application for the mark NOAH’S, reciting
Providing facilities for business meetings, business receptions and
networking events; providing rental of banquet and social function
facilities for special occasions, namely, weddings, wedding receptions,
rehearsal dinners, birthday parties, social receptions and events,
anniversary parties, business receptions, political events and rallies,
bachelor parties, bachelorette parties, networking events, sales
seminars, and social meetings in International Class 43.7

In its amended answer, Applicant denied the salient allegations in the notice of
opposition and raised the equitable affirmative defenses of laches and unclean
hands.8 These equitable defenses were not pursued in Applicant’s brief, and are
therefore waived. Kemi Organics, LLC v. Gupta, 126 USPQ2d 1601, 1602 n. 5 (TTAB
2018); Harry Winston, Inc. v. Bruce Winston Gem Corp., 111 USPQ2d 1419, 1422
(TTAB 2014). Both parties submitted briefs and presented arguments at oral hearing
before this panel on April 11, 2018.

Court of Appeals for the Eighth Circuit, order dated March 6, 1984, Nos. 83-1544 and 83-
1610.” Trademark Act §§ 8 and 15 affidavits accepted and acknowledged. First renewal.
Courtesy reminder regarding Section 9 renewal sent on September 2, 2016.
6 21 TTABVUE 3.
7 Application Serial No. 86384433, filed September 3, 2014 under Trademark Act Section
1(a), 15 U.S.C. § 1051(a), alleging November 1, 1957 as the date of first use of the mark in
commerce in connection with the services.
8 26 TTABVUE. Applicant asserted further matters as affirmative defenses that are more in
the manner of amplifications of its denials, and have been so construed.
Opposition No. 91223629
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I. Record and Evidentiary Objections
The record comprises the pleadings and, without any action by the parties, the file
of the involved application. Trademark Rule 2.122(b)(1), 37 C.F.R. § 2.122(b)(1).
Opposer submitted the following evidence by notice of reliance:
• Current copies from the Trademark Status & Document Retrieval (TSDR)
database of the United States Patent and Trademark Office (USPTO)
showing the current status and title of Opposer’s Registration Nos.
1961874, 2068328 and 2092446 for the mark NOAH’S ARK (56 TTABVUE
12-18);

• Current copies from the TSDR database of the USPTO showing the current
status and title of Opposer’s application Serial No. 86384433 for the mark
NOAH’S, filed September 3, 2014 (56 TTABVUE 19-23);

• Newspaper articles submitted to show that Opposer has been advertising
its restaurant, bar, banquet and special event services using NOAH’S ARK
and NOAH’S since at least 1959 (56 TTABVUE 24, 41, 42);

• Newspaper articles submitted to show that community members refer to
Opposer’s NOAH’S ARK restaurant interchangeably as NOAH’S ARK and
NOAH’S (56 TTABVUE 34-40);

• Newspaper articles submitted to show that people have held special events
at NOAH’S since 1959, and that Opposer has been advertising using
NOAH’S ARK and NOAH’S since 1959 (56 TTABVUE 25-33, 43-44);

• Third-Party registrations and applications currently existing on the
USPTO registry listing both “restaurant services” and “rental of banquets
and social function facilities” in the identification of goods and services (56
TTABVUE 45-176); and

• Applicant’s responses to Opposer’s first set of requests for admissions (64
TTABVUE 5-13).

Opposer also submitted the following testimony:

• Testimony affidavit of James Lacona and exhibits attached thereto, (37
TTABVUE 1-71); and

• Testimony affidavit of Michelle Booth (38 TTABVUE 1-2).

Opposition No. 91223629
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Applicant submitted the following evidence by notice of reliance:

• Copies of its cancelled trademark registrations for the marks NOAH’S
GATHER WORK PLAY and NOAH’S YOUR PLACE and design (62
TTABVUE 6-12);

• Opposer’s initial disclosures and its responses to Applicant’s first sets of
interrogatories, requests for production of documents and requests for
admission (62 TTABVUE 13-46).

Applicant further submitted the following testimony:

• Cross-deposition of James Lacona, and Exhibit 10 to Lacona deposition (55
TTABVUE 1-77);

• Cross-deposition of Michelle Booth (52 TTABVUE 1-34);

• Testimony declarations of William Bowser and exhibits attached thereto
(57 TTABVUE 1-11; 65 TTABVUE 2-64); and

• Testimony declaration of Nicholas Redd and exhibits attached thereto (59
TTABVUE 1-99; 65 TTABVUE 65-150).

Applicant filed motions to strike portions of James Lacona’s testimony affidavit9
and portions of Michelle Booth’s testimony affidavit10 on various grounds. Some of
Applicant’s concerns go more toward the weight the evidence is to be given rather
than its admissibility, and none of the evidence is material to our outcome-
determinative findings of fact. Ultimately, the Board is capable of weighing the
relevance and strength or weakness of the objected-to testimony and evidence in this
specific case, including any inherent limitations, and this precludes the need to strike
the testimony and evidence. Luxco, Inc. v. Consejo Regulador del Tequila, A.C., 121

9 46 TTABVUE.
10 47 TTABVUE.
Opposition No. 91223629
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USPQ2d 1477, 1479 (TTAB 2017). Given the circumstances herein, we choose not to
make specific rulings on each and every objection. As necessary and appropriate, we
will point out in this decision any limitations applied to the evidence or otherwise
note that the evidence cannot be relied upon in the manner sought. See Alcatraz
Media Inc. v. Chesapeake Marine Tours Inc., 107 USPQ2d 1750, 1755 (TTAB 2013),
aff’d mem., 565 Fed. Appx. 900 (Fed. Cir. 2014); Kohler Co. v. Baldwin Hardware
Corp., 82 USPQ2d 1100, 1104 (TTAB 2007). While we have considered all the
evidence and arguments submitted by the parties, we do not rely on evidence not
discussed herein. Applicant’s motions to strike otherwise are denied.
II. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111
USPQ2d 1058, 1062 (Fed. Cir. 2014); see also, e.g., Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ2d 1340, 1344 (TTAB 2017). In our December 1, 2016 decision on
Opposer’s motion for summary judgment, we found that, as a matter of law, no
genuine dispute existed as to: Opposer’s standing; Opposer’s priority of use with
respect to the mark and services identified in Opposer’s Registration No. 1961874;11
and Opposer’s priority of use of its asserted common law marks NOAH’s and NOAH’S
ARK in “connection with, at a minimum, ‘restaurant, bar, banquet and special event
services’ prior to April 21, 2014.”12

11 At the time Opposer filed its summary judgment motion, it had not pleaded ownership of
its Registration Nos. 2068328 and 2092446. 19 TTABVUE 3-4. Opposer’s summary judgment
motion otherwise was denied.
12 Id. at 6-14.
Opposition No. 91223629
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Opposer’s standing to oppose registration of Applicant’s mark further is
established by its additional, subsequently pleaded registrations, which the record
shows to be valid and subsisting, and owned by Opposer. See, e.g., Cunningham v.
Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000); Otter Prods.
LLC v. BaseOneLabs LLC, 105 USPQ2d 1252, 1254 (TTAB 2012). In addition,
because Opposer’s pleaded registrations are of record and Applicant did not
counterclaim to cancel them, priority is not an issue with respect to the services
identified by Opposer’s registrations. Penguin Books Ltd. v. Eberhard, 48 USPQ2d
1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice King’s Kitchen, Inc., 496
F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).
III. Likelihood of Confusion
We assess 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., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Opposer bears the burden of proving
its claim by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848. In
any likelihood of confusion analysis, the similarities between the goods or services
and the similarities between the marks – the first two DuPont factors – are key
considerations. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098,
192 USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes
to the cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”); see also Oakville Hills Cellar, Inc. v. Georgallis Holdings,
LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1288 (Fed. Cir. 2016) (“The likelihood of
Opposition No. 91223629
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confusion analysis considers all DuPont factors for which there is record evidence but
‘may focus . . . on dispositive factors, such as similarity of the marks and relatedness
of the goods.’”) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 303 F.3d 1156, 64
USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. Focus on Registration No. 1961874
For purposes of the du Pont factors that are relevant to this opposition we will
consider Applicant’s involved mark and identified services and the mark
that is the subject of Opposer’s pleaded Registration No. 1961874,
identifying “restaurant and bar services.” If likelihood of confusion is found as to the
mark and services in this registration, it is unnecessary to consider Opposer’s other
pleaded registrations and common law marks. Conversely, if likelihood of confusion
is not found as to the mark and services in this registration, we would not find
likelihood of confusion as to the mark and services in the other pleaded registrations
or Opposer’s asserted common law marks. See, e.g., In re Max Capital Grp. Ltd., 93
USPQ2d 1243, 1245 (TTAB 2010).
B. Strength of Opposer’s Mark
We begin by evaluating the strength of Opposer’s mark and the scope of protection
to which it is entitled. The fifth DuPont factor is the fame of the prior mark, and the
sixth factor is the number and nature of similar marks in use for similar goods or
services. DuPont, 177 USPQ at 567. In determining strength of a mark, we consider
both inherent strength, based on the nature of the mark itself, and commercial
strength or recognition. Bell’s Brewery, 125 USPQ2d at 1345; see also In re
Opposition No. 91223629
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Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A
mark’s strength is measured both by its conceptual strength (distinctiveness) and its
marketplace strength (secondary meaning).”). Commercial strength may be
measured indirectly, by volume of sales and advertising expenditures and factors
such as length of use of the mark, widespread critical assessments, notice by
independent sources of the goods or services identified by the mark, and general
reputation of the goods or services. Weider Publ’ns, LLC v. D&D Beauty Care Co., 109
USPQ2d 1347, 1354 (TTAB 2014).
Concerning conceptual strength, we find that Opposer’s mark is
arbitrary in connection with “restaurant and bar services” and therefore inherently
distinctive. As for marketplace strength, Opposer submitted testimony and evidence
that it has made exclusive use of its mark in the Des Moines, Iowa area since 1957,
that its mark is well known to local consumers and businesses, and that there has
never been another restaurant or facility in the area using the name NOAH’S prior
to Applicant’s involved mark.13 Applicant “does not contest the fame of Opposer’s
prior marks. Nor does it contest the fact that there is not another restaurant bearing
the word ‘Noah’s’ in the Des Moines area.”14
Considering the record as a whole, including evidence pertaining to both
conceptual and commercial strength, we find that Opposer’s mark is inherently

13 37 TTABVUE 2-5, 12; 56 TTABVUE 13-18, 34-40.
14 73 TTABVUE 22, n.8.
Opposition No. 91223629
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distinctive and has achieved marketplace recognition during its sixty years of use,
particularly in the area of Des Moines, Iowa. The record does not establish that the
mark is entitled to only a narrowed scope of protection due to third-
party use or registration of confusingly similar marks for similar or related services.
We therefore accord Opposer’s strong mark the broad scope of protection to which
inherently distinctive and commercially well-known marks are entitled. See Joseph
Phelps Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733,
1734 (Fed. Cir. 2017) (stating that likelihood of confusion fame varies along a
spectrum from very strong to very weak).
C. Similarity of the Marks
The first DuPont factor is the similarity or dissimilarity of the parties’ marks. In
a likelihood of confusion analysis, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and commercial
impression. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110
USPQ2d 1157, 1160 (Fed. Cir. 2014).
Applicant’s mark NOAH’S in standard characters consists of the first term of
Opposer’s distinctive mark and merely omits the word ARK, which
modifies NOAH’S in Opposer’s mark. While there is no rule that likelihood of
confusion automatically applies where one mark encompasses another, in this case,
as in many others, the fact that Applicant’s entire mark is incorporated in Opposer’s
Opposition No. 91223629
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mark increases the similarity between the two. See, e.g., In re Mighty Leaf Tea, 601
F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010) (applicant’s mark ML is similar to
registrant’s mark ML MARK LEES); In re U.S. Shoe Corp., 229 USPQ 707, 709
(TTAB 1985) (finding applicant’s CAREER IMAGE marks similar to registered mark
CREST CAREER IMAGES). Thus, the marks are similar in appearance and sound
inasmuch as Applicant’s mark is identical to the first term in Opposer’s two-word
mark.
Moreover, the significance of the term NOAH’S in Opposer’s mark
is reinforced by its location as the first word thereof. Presto Prods. Inc.
v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897) TTAB 1988) (“it is often the first part
of a mark which is most likely to be impressed in the mind of a purchaser and
remembered”); see also Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks,
consumers must first notice the identical lead word); Johnson Publ’g Co. v. Int’l Dev.
Ltd., 221 USPQ 155, 156 (TTAB 1982) (EBONY for cosmetics and EBONY DRUM for
hairdressing and conditioner); In re South Bend Toy Mfg. Co., Inc., 218 USPQ 479,
480 (TTAB 1983) (LIL’ LADY BUGGY for toy doll carriages and LITTLE LADY for
doll clothing). Furthermore, although Opposer’s mark is in stylized form, a
registration for Applicant’s standard character mark would grant Applicant the right
to depict its mark in any form, including the stylized lettering shown in Opposer’s
mark. Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F3d 1344, 98 USPQ2d 1253,
Opposition No. 91223629
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1257 (Fed. Cir. 2011). In addition, consumers are often known to use shortened forms
of names, and it is highly likely that Opposer and its services are referred to as
“Noah’s.” Cf. In re Abcor Dev. Corp., 588 F.2d 811, 200 USPQ 215, 219 (CCPA 1978)
(Rich, J., concurring: “the users of language have a universal habit of shortening full
names – from haste or laziness or just economy of words”). In this case, Opposer has
introduced evidence that it refers to its services under “the nickname NOAH’S”15 and
that consumers also refer to its services by that mark.16
With regard to meaning, Applicant argues:
Noah [Applicant] initially adopted the word to invoke a gathering place
in the spirit of the Biblical prophet Noah’s gathering of animals to an
ark. Opposer tilts towards Biblical imagery, but in the beginning, the
restaurant was named after an actual man named Noah, who just
happened to be building his restaurant in the rain: Noah Lacona,
Opposer’s founder, who brought pizza to Des Moines.17

Applicant acknowledges that its NOAH’S mark suggests the Biblical prophet Noah,
and that Opposer’s mark also suggests Biblical imagery. We agree that Opposer’s
mark suggests the story of the Biblical prophet Noah and the ark in
which he gathered pairs of the Earth’s animals. We find that, given the general
public’s familiarity with the tale, Opposer’s customers are more likely to associate its
mark with the Biblical Noah and his ark than with the given name of Opposer’s

15 67 TTABVUE 5; 37 TTABVUE 3-5, 14-15, 18, 24.
16 56 TTABVUE 25-33, 43-44.
17 73 TTABVUE 22.
Opposition No. 91223629
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founder. This meaning is highly similar to the meaning of Applicant’s NOAH’S mark,
which suggests, as Applicant explains, “a gathering place in the spirit”18 of Noah’s
ark. As a result, we find that the parties’ marks are similar in meaning and, overall,
convey similar commercial impressions.
Applicant further argues:
But here, other than their use of the word “Noah’s,” Noah’s proposed
mark and Opposer’s marks aren’t anything alike. Noah and Opposer
present that word in vastly different ways. Opposer presents its marks
in … rising cursive font, followed by the word “Ark.” In contrast, Noah
presents its mark in all capital letters in a standard print font, followed
by the words “Event Venue.” The coloring is different. Noah has never
used the word “Ark,” and it has not used ark imagery for years. It has
never used ark imagery in Des Moines.19

However, we must base our determination of the similarity of the parties’ marks
on the marks as displayed in Opposer’s registration and the involved application, not
as used in the marketplace. Thus, it is of no moment that Applicant utilizes its
NOAH’S mark in connection with the wording “Event Venue” because that wording
is not part of Applicant’s mark. Similarly and as discussed above, Applicant’s mark
is displayed in standard characters, and may be presented in any combination of font,
color and stylization. Citigroup Inc. v. Capital City Bank Grp. Inc., 98 USPQ2d at
1257. Because neither mark is limited to any particular color, Applicant’s arguments
that the parties’ marks utilize different coloring similarly is unpersuasive. Finally, it
is not necessary for Applicant to use the term “ark” or ark imagery to support a
finding that the marks are similar. “The proper test is not a side-by-side comparison

18 Id.
19 Id. Emphasis in original.
Opposition No. 91223629
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of the marks, but instead whether the marks are sufficiently similar in terms of their
commercial impression such that persons who encounter the marks would be likely
to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012) (quotation omitted).
We acknowledge that the presence of ARK as the trailing term in Opposer’s mark
distinguishes it somewhat visually and aurally from Opposer’s mark. This point of
distinction, however, does not significantly diminish the strong similarities in
connotation and overall commercial impression engendered by these two marks. We
find that the first DuPont factor weighs in favor of a finding that confusion is likely.
D. Similarity of the Services and Trade Channels
We next consider the second and third DuPont factors, the similarity or
dissimilarity of the parties’ services and the parties’ established, likely-to-continue
trade channels. Our decision is based on the identification of services as set forth in
the application and Opposer’s pleaded registration. Stone Lion, 110 USPQ2d at 1162.
Again, Opposer’s services are “restaurant and bar services.” Applicant’s services
identified in its involved application are:
Providing specialized facilities for business meetings, business
receptions, and networking events; providing facilities for trade
exhibitions in International Class 35; and

Providing general purpose facilities for fairs and exhibitions; rental of
banquet and social function facilities for special occasions, namely,
weddings, wedding receptions, rehearsal dinners, bar mitzvahs, bat
mitzvahs, birthday parties, social receptions and events, anniversary
parties, fundraising events, business receptions, political events and
rallies, quinceañeras, wakes, memorial services, funeral services, trade
shows, bachelor parties, bachelorette parties, fashion shows, networking
Opposition No. 91223629
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events, training seminars conventions, conferences, and social meetings
in International Class 43.

Applicant argues that
Applicant Noah Corporation (“Noah”) does not operate restaurants—full
stop. Its product is customizable event space, not food. This case is about
whether Noah can use its name to sell its event space, at least in Des
Moines, Iowa, or whether Noah’s, Inc. (“Opposer”), an Italian restaurant
in Des Moines, can block it. It can’t.20

Applicant further elaborates its arguments:
By Opposer’s own admission, it sells food. Its customers may eat that
food in a downstairs restaurant or in one of two upstairs banquet rooms,
but Opposer’s aim is to sell its food. Opposer’s restaurant business far
outstrips its banquet business. It is a restaurant at which a customer
can reserve a large-party room. Indeed, although Opposer states that it
built banquet rooms to “rent” for various purposes, it very rarely “rents”
any rooms at all. Opposer admits that its restaurant sales far outstrip
its banquet sales—even though Opposer doesn’t really keep records of
either one, making it impossible for Opposer to satisfy its burden.

By contrast, Noah sells only one thing: event space that is customizable
in a variety of variables, and with a variety of amenities, like televisions,
pool tables, stages, audiovisual equipment, and the like. It expressly
does not prepare, offer, or serve food or beverages of any kind. Noah’s
customers must arrange for that—or not arrange for that, as they
wish—themselves. And while Opposer offers an intake process that
involves only a few amenities, Noah offers a totally customizable,
complete with the assistance of a planner to aid in the development of
the activity.21

The issue, though, is not whether purchasers would confuse the parties’ services,
but whether there is a likelihood of confusion as to their source. In re Cook Med.
Techs. LLC, 105 USPQ2d 1377, 1380 (TTAB 2012). “Even if the goods and services in
question are not identical, the consuming public may perceive them as related enough

20 73 TTABVUE 5.
21 Id. at 24-25.
Opposition No. 91223629
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to cause confusion about the source or origin of the goods and services.” Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002) quoted in In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed.
Cir. 2014). “When analyzing the similarity of the services, ‘it is not necessary that the
products of the parties be similar or even competitive to support a finding of likelihood
of confusion.’ 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB 2007). Instead,
likelihood of confusion can be found ‘if the respective products are related in some
manner and/or if the circumstances surrounding their marketing are such that they
could give rise to the mistaken belief that they emanate from the same source.’ Id.”
Coach Servs. v. Triumph Learning, 101 USPQ2d at 1722.
Opposer made of record copies of approximately thirty-five live, use-based, third-
party registrations comprising services of a type recited by Opposer and Applicant.22
The following examples are illustrative:
Registration No. 5250247 for the mark FOREVER FLORIDA identifying
restaurant services; rental of banquet and social function facilities for
special occasions, namely, family reunions, receptions, birthday parties,
weddings, anniversaries, banquets and retreats;

Registration No. 5231661 for the mark BISHOP’S BAY and design
identifying restaurant services; rental of banquet and social function
facilities for special occasions, namely, receptions, wedding receptions,
parties, birthday parties, events, charitable events and meetings;

Registration No. 5182271 for the mark PRARIE STREET identifying
bar services; rental of banquet and social function facilities for special
occasions, namely, corporate events, fundraisers, award ceremonies and

22 56 TTABVUE 45-176. All marks are in standard characters unless otherwise noted. We do
not include the entire description of goods and/or services for each registration. We have
listed only the services relevant to this proceeding.

Opposition No. 91223629
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parties including wedding receptions and birthday parties; restaurant
services;

Registration No. 4896506 for the mark HYDE identifying bar services;
restaurant services; rental of banquet and social function facilities for
special occasions, namely, party and wedding receptions, provision of
facilities for conferences, exhibitions and conventions;

Registration No. 5154291 for the mark THE CENTRE TIME WELL
SPENT in stylized form identifying restaurant services and rental of
banquet and social function facilities for special occasions, namely,
wedding and social events, offered in an urban, multi-use facility;

Registration No. 5047848 for the mark THE DEARBORN identifying
bar and restaurant services; rental of banquet and social function
facilities for special occasions and events, namely, wedding receptions,
birthday parties, fundraisers;

Registration No. 4950498 for the mark URBAN PUTT identifying
restaurant services; rental of banquet and social function facilities for
special occasions, namely, birthday parties, corporate parties, and small
social gatherings;

Registration No. 4734977 for the mark TSP identifying bar services;
rental of banquet and social function facilities for special occasions,
namely, parties, celebrations, receptions, award ceremonies, meetings,
festivities;

Registration No. 4710526 for the mark TOP OF THE TOWN identifying
restaurant services; reception services, namely, rental of banquet and
social function facilities for special occasions, namely, wedding
receptions, birthday parties, religious parties, family reunions, company
parties, retirement parties; reception and conference services, namely,
providing general purpose facilities for business conferences and
business meetings;

Registration No. 3315915 for the mark RAMKOTA identifying bar and
restaurant services; rental of banquet and social function facilities for
special occasions, namely, weddings, parties, corporate events, meeting,
conferences, and trainings;

Registration No. 5255149 for the mark R and design identifying bar and
restaurant services; providing meeting, conference, exhibition,
convention, banquet and social function facilities; rental of banquet and
Opposition No. 91223629
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social function facilities for special occasions, namely, weddings, parties,
corporate events, meeting, conferences, and trainings;

Registration No. 5218365 for the mark WE ARE NAPA in stylized form
identifying restaurant services; providing banquet and social function
facilities; providing convention facilities; providing conference,
exhibition and meeting facilities; rental of banquet and social function
facilities for special occasions, namely, weddings, parties, corporate
events, meetings, conferences, trainings and other special events; and

Registration No. 5237384 for the mark HOTEL CHACO identifying
restaurants; bars; rental of meeting rooms; provision of facilities for
conventions rental of banquet and social function facilities for special
occasions, namely, wedding and anniversary receptions, parties,
fundraisers, special events, corporate retreats, and business meetings.

Third-party registrations which individually cover a number of different services that
are based on use in commerce may have some probative value to the extent that they
serve to suggest that the listed services are of a type which may emanate from the
same source. In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993);
In re Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). In this
case, the third-party registrations made of record by Opposer suggest that its services
as well as services of a type identified in both Classes of Applicant’s application may
be identified under the same mark and emanate from a common source. That is to
say, the third-party registrations support a finding that Opposer’s restaurant and bar
services may emanate from the same source as providing facilities for both business
and social functions.
In that regard, we note that the system for classification of goods and services was
created for the convenience of the USPTO, and has no bearing on the issue of
likelihood of confusion. Trademark Act Section 30 provides in pertinent part that
“The Director may establish a classification of goods and services, for convenience of
Opposition No. 91223629
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Patent and Trademark Office administration, but not to limit or extend the
applicant’s or registrant’s rights.” 15 U.S.C. § 1112. The Court of Appeals for the
Federal Circuit has stated that “classification is wholly irrelevant to the issue of
registrability under section 1052(d), which makes no reference to classification. Cf. 15
U.S.C. § 1112….” Jean Patou, Inc. v. Theon, Inc., 9 F.3d 971, 29 USPQ2d 1771, 1774
(Fed. Cir. 1993); see also In re Sailerbrau Franz Sailer, 23 USPQ2d 1719, 1720 (TTAB
1992) (“[T]he fact that goods are found in different classes has no bearing on the
question of likelihood of confusion. The separation of goods into the various classes of
the classification schedule is merely a convenience for the Office and is not intended
as a commentary on their relationship to one another in the marketplace.”); Nat’l
Football League v. Jasper Alliance Corp., 16 USPQ2d 1212, 1216 n.5 (TTAB 1990)
(“The classification system was established for the convenience of the Office rather
than to indicate that goods in the same class are necessarily related or that
classification in different classes indicates that they are not related.”); see generally 3
J. THOMAS MCCARTHY, MCCARTHY ON TRADEMARKS & UNFAIR COMPETITION § 19:56
(5th ed. June 2018). For that reason, and also because services may be re-classified
from one International Class to another for administrative purposes, we find it
unnecessary for Opposer to have submitted third-party registrations enumerating
services in International Classes 35, 42 and 43.
In further support of Opposer’s position that the services are related, Mr. James
Lacona testified in his testimony affidavit that Opposer has hosted birthday parties,
anniversary parties, memorial services, business and social receptions, graduation
parties, wedding showers, retirement and holiday parties and class reunions in its
Opposition No. 91223629
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banquet facility.23 In addition, Mr. Lacona testified that in his personal experience of
more than thirty years in the restaurant business, he is aware of at least four other
restaurants in the Des Moines area that also provide banquet and social function
facilities.24
There are no restrictions in the identifications of services as to the parties’
respective channels of trade. See Octocom Sys., Inc. v. Hous. Computs. Servs. Inc., 918
F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed.” (citations
omitted)). As a result, the parties’ services are presumed to move in all trade channels
customary therefor, and to be available to all classes of consumers. Opposer
advertises its services through word of mouth, print advertisements, fliers, and on its
menus.25 Opposer markets its services to its restaurant customers and anyone
seeking to hold an event in its banquet facility.26 Applicant advertises its services on

23 37 TTABVUE 6-9; 19-72.
24 Id. at 5-6. Applicant’s objections (46 TTABVUE 4-5) to this testimony on the bases that it
lacks foundation and is speculative are overruled. Mr. Lacona provides this testimony on the
basis of personal knowledge from his long experience in the restaurant business in the
pertinent geographic area. With regard to Applicant’s objection based upon relevance, we find
Mr. Lacona’s testimony relevant to the relatedness of the parties’ services. As a result,
Applicant’ objections on this basis are also overruled.
25 Id. at 4, 10-13.
26 Id. at 3, 7-9.
Opposition No. 91223629
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its internet website, trade shows and expos, printed publications, and with companies
in the wedding market that market its services.27
In addition, Applicant’s Chief Operating Officer, Mr. Nicholas Redd, testified that
the consumers of its services include not only the individuals or organizations hosting
events at their facilities, but also the attendees.28 In other words, Applicant’s
consumers include not only brides and event coordinators, but also anyone attending
a wedding or other event at Applicant’s facilities and may consider subsequently
hosting a high school reunion, off-site training, or other event in the future or refer
Applicant’s services to someone else.29
Thus, there is evidence of a partial overlap in the parties’ channels of trade, and
no specified restrictions in their respective identifications of services that would
impose limitations thereupon. In addition, the parties both include among their
consumers individuals and organizations seeking to host an event at their respective
facilities as well as attendees thereof. As a result, the parties market their services
to overlapping groups of consumers.
Further, there are no geographical restrictions recited either in Opposer’s
Registration No. 1961874 or the involved application. Section 7(b) of the Trademark
Act, 15 U.S.C. §1057(b), provides that a certificate of registration on the Principal
Register shall be prima facie evidence of the validity of the registration, of the
registrant’s ownership of the mark and of the registrant’s exclusive right to use the

27 59 TTABVUE 9-12.
28 65 TTABVUE 88-90.
29 Id.
Opposition No. 91223629
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mark in connection with the goods or services identified in the certificate. See Giant
Food Inc. v. Nations Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir.
1983). Thus, Opposer’s exclusive rights to use the mark in its Registration No.
1961874 accrue throughout the United States, not simply Des Moines.30
Accordingly, we find that the du Pont factors of similarity of the services and trade
channels weigh in favor of finding a likelihood of confusion.
E. Consumer Sophistication
The fourth DuPont factor is the conditions under which and buyers to whom sales
are made. Applicant argues that Opposer markets its services “to whoever comes in
the door”31 of its restaurant and that Opposer’s
Banquet customers simply complete a form identifying the number of
attendees and the food they want, and pay a deposit that comes out of
their final bill. Food is marked up for banquet customers, but they are
charged, on average, about $170.00 for banquet room usage.32

Applicant argues that, by contrast, its customers
are planning major events, including major life events like weddings and
wedding receptions. Necessarily, a lot of thought goes into that decision;
it is not an impulse purchase. Prospective customers take a tour of the
Noah Event Venue prior to booking for an event. Noah consultants assist
with the planning and customization of the Noah Event Venue for the
particular event. Events cost thousands of dollars, and customers make
substantial deposits toward them and make installment payments, such
that the total event price is paid prior to the event.33

30 Geographic limitations are considered and determined only in the context of a concurrent
use proceeding. Trademark Rule 2.133(c); Enterprise Rent-A-Car Co. v. Advantage Rent-A-
Car Inc., 330 F.3d 1333, 66 USPQ2d 1811, 1815 (Fed. Cir. 2003). Unlike Opposer’s other two
pleaded registrations (see nn. 4 and 5 above), Registration No. 1961874 was not involved in
a concurrent use proceeding or otherwise geographically limited.
31 73 TTABVUE 27.
32 Id.
33 Id. at 28.
Opposition No. 91223629
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However, the evidence of record establishes that both parties provide venues for
events including, inter alia, weddings, wedding receptions and wedding showers.
Because the descriptions of services are not restricted by price point, we find
unpersuasive Applicant’s arguments that the cost of its venue is considerably higher
than the cost of the banquet facility offered by Opposer. Rather, we find that the
parties offer their facilities for events such as weddings at all price points offered to
the full range of usual consumers for such services. Stone Lion, 110 USPQ2d at 1162
(stating that registrability must be decided based on the identification of goods or
services “‘regardless of what the record may reveal as to the particular nature of an
applicant’s goods, the particular channels of trade or the class of purchasers to which
sales of the goods are directed’”) (quoting Octocom Sys., Inc. v. Hous. Comps. Servs.
Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Hughes Furn.
Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015). This includes both more modest
wedding celebrations and larger, more costly wedding events. We find that the fourth
DuPont factor weighs in favor of a finding of likely confusion.
F. Evidence of Actual Confusion
Finally, we assess Opposer’s argument under the eighth DuPont factor, the length
of time during and conditions under which there has been concurrent use without
evidence of actual confusion.
Opposer submitted testimony of James Lacona and Michelle Booth asserting, inter
alia, that there have been instances of actual confusion as to the source of the parties’
Opposition No. 91223629
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services.34 Applicant strongly objects to this testimony and we find that it largely
consists of hearsay. However, even if there is no admissible evidence of actual
confusion, we are also aware that in most cases, “the lack of any occurrences of actual
confusion is not dispositive inasmuch as evidence thereof is notoriously difficult to
come by.” Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992).
In any event, as the Federal Circuit has noted, it is unnecessary to show actual
confusion to establish a likelihood of confusion. See, e.g., Herbko Int’l, 64 USPQ2d at
1380; Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 14 USPQ2d 1840, 1842-
43 (Fed. Cir. 1990). “A showing of actual confusion would of course be highly
probative, if not conclusive, of a high likelihood of confusion. The opposite is not
necessarily true, however. The lack of evidence of actual confusion carries little
weight.” Majestic Distilling, 65 USPQ2d at 1205. Therefore, while we find that the
eighth DuPont factor is neutral.
IV. Conclusion
We have carefully considered all arguments and evidence of record, including any
not specifically discussed herein. Based thereupon, we find that Applicant’s mark is
similar to Opposer’s strong and distinctive mark; that the services are related and
may be encountered in the same channels of trade by common classes of consumers
that will include ordinary consumers exercising a normal degree of care. The absence
of admissible evidence of actual confusion is neutral. Accordingly, we find that
Opposer has carried its burden to establish by a preponderance of the evidence its

34 37 TTABVUE 6-7; 38 TTABVUE 2-3.
Opposition No. 91223629
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standing and priority, and that Applicant’s mark is likely to cause consumer
confusion when used in association with its services in International Classes 35 and
43.
Decision: The opposition to registration of application Serial No. 86258328 is
sustained.