O.C. Seacrets, Inc.v.Hotelplan Italia S.p.A.

Trademark Trial and Appeal Board

Mar 8, 2012

No. 91190886 (T.T.A.B. Mar. 8, 2012)

Mailed: March 8, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

O.C. Seacrets, Inc.
v.
Hotelplan Italia S.p.A.
_____

Opposition No. 91190886
to application Serial No. 79048720
filed on November 22, 2007
_____

Barth X. deRosa and Melissa A. Alcantara of Dickson Wright
LLC for O.C. Seacrets.

Mark Lebow of Young & Thompson for Hotelplan Italia S.p.A.
______

Before Kuhlke, Cataldo, and Mermelstein, Administrative
Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:

Applicant, Hotelplan Italia S.p.A., seeks registration
of the mark SECRETS LINE in standard characters on the
Principal Register for goods and services identified in the
application as:
Travel books, travel magazines, travel
pamphlets, printed matter, namely, travel
brochures, maps and travel guides, in
International Class 16;

Advertising and promotional campaigns for third
parties; business administration of hotels,
THIS OPINION IS NOT A
PRECEDENT OF THE
T.T.A.B.
Opposition No. 91190886
2
restaurants, pensions, residences, villas,
holiday homes, hostels, camping sites for third
parties; providing office functions; study,
plan, realization, managing and organizing of
fidelity programs for customers, namely,
promoting the goods and services of others by
means of a preferred customer benefit program
featuring supporter fidelity cards that contain
the personal data of the owner for use in
conjunction with traveling; conducting incentive
bonus schemes in the field of business
administration, promotional and advertising
campaigns for third parties through the
distribution of prepaid stored value cards for
the purpose of promoting and rewarding loyalty;
market research and analysis services, in
International Class 35;

Monetary and financial affairs, namely, issuing
of travel checks and letters of credit from
brokers or travel agencies, in International
Class 36;

Telecommunications services, namely, local and
long distance transmission of voice, data,
graphics by means of telephone, telegraphic,
cable, and satellite transmissions; transmission
of messages, images, information, sounds and
data by internet, by satellite and by cable, in
International Class 38;

Travel agencies and tour operators services,
namely, organization and reservations of travel
arrangement and travel tickets booking;
arranging of cruises and excursions; escorting
of travelers and tour conducting; organization
and arrangement of sight-seeing tours;
consultancy and information relating to travels,
transportation and tourism, namely, timetables,
airlines tariffs and organizing and cruises;
organizing and rental of transportation
services, namely, making reservations and
bookings for transportation and transportation
services by air, road, rail and sea, in
International Class 39;

Education services, namely, providing seminars,
workshops and training courses in the fields of
tourism and hotel trade; organization of
sporting and cultural activities, namely,
Opposition No. 91190886
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triathlons, and sporting events pertaining to
tennis, swimming, golf, gymnastics, volleyball,
ski and painting; organizing educational
courses, congresses, conventions, exhibitions
and meetings, featuring the subject matter of
tourism for training staff involved in tourist
activities; organizing of sports competitions
and sports events in the field of football,
tennis, volleyball, swimming, golf, gymnastics
and skiing for the entertainment of staff
involved in tourist activities; recreation and
entertainment services, namely, organizing
sports competitions, sports competitions with
prizes, conducting parties featuring party
games, planning arrangement of showing movies,
shows, plays or musical performances,
organization of dancing events and organization
of games for children; publication of books,
magazines, travel magazines and travel guides,
in International Class 41; and

Reservation of hotel rooms for travelers,
booking of campground facilities, hostels,
arranging temporary housing accommodations,
reservations of holiday villages for travelers,
reservation of restaurants, in International
Class 43.

The application was filed on November 22, 2007, under
Section 66 of the Trademark Act, 15 U.S.C. § 1141, with a
foreign priority date of September 17, 2007. The
application includes a disclaimer for the word LINE.
Opposer, O.C. Seacrets, Inc., has opposed registration
of applicant’s mark on the ground that, as applied to
applicant’s goods and services in International Classes 16,
35, 39, 41 and 43, the mark so resembles opposer’s
previously used and registered mark SEACRETS for, inter
alia, restaurant, bar, hotel, nightclub and live
entertainment services, and a wide variety of collateral
Opposition No. 91190886
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goods and services (e.g., a “credit card” for use on the
property to encourage customer loyalty and cross-promotion
campaigns for travel and hotel stays in Jamaica) as to be
likely to cause confusion under Section 2(d) of the
Trademark Act, 15 U.S.C. §1052(d). In addition, opposer
asserts the ground that applicant’s mark falsely suggests a
connection with opposer under Section 2(a) of the Trademark
Act, 15 U.S.C. §1052(a).1
Applicant has filed an answer admitting that “it has
not yet used its mark in the United States with respect to
the goods and services identified in its application” and
denying the remaining salient allegations.
The Record
By operation of the Trademark Rules, the pleadings
herein and the file of the opposed application are of
record. Opposer submitted the testimony, with accompanying
exhibits, of Leighton Moore, opposer’s President and Owner,
and Gary Figgs, opposer’s Vice President and Chief Financial
Officer. In addition, opposer submitted, under 17 notices
of reliance: (1) title and status copies of opposer’s
pleaded registration for the mark SEACRETS for restaurant
and bar services and several other registrations and

1 The opposition was not brought against the services listed in
International Classes 36 and 38. On April 2, 2010, the Board
entered judgment in favor of applicant on the fraud claim and
denied opposer’s motion to add the claim of no bona fide intent
to use the mark.
Opposition No. 91190886
5
applications owned by opposer for SEACRET-formative marks
for a variety of goods and services; (2) certain of
opposer’s discovery requests and applicant’s responses
thereto; (3) printed publications; (4) samples of opposer’s
print advertising; (5) third-party registrations; (6)
dictionary definitions; and (7) a prior Board decision
involving opposer.
Applicant submitted, under a notice of reliance,
various documents (applicant’s brochures, invoices,
photographs of promotional articles, etc.) described as
“corresponding in part to Opposer’s Trial Exhibit No. 147,”
which consists of applicant’s documentary response to
opposer’s Interrogatory Nos. 8 and 9. Opposer, in its
brief, did not object to the documents submitted under
applicant’s notice of reliance. It is not clear if
applicant intended to submit these documents under Trademark
Rule 2.120(j)(ii)(5), wherein a party may submit its
discovery responses “which should in fairness be considered
so as to make not misleading what was offered by the
receiving or inquiring party.” Many of the documents appear
simply to be duplicates of those submitted by opposer under
its notice of reliance. We have considered these documents
for whatever probative value they may have.
Applicant did not take any testimony, cross examine
opposer’s witnesses or file a brief. However, opposer in
Opposition No. 91190886
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its brief, states that the parties “stipulated to Applicant
having a ‘continuing objection to the introduction of
evidence related to the mark SEACRET DESTINATIONS on the
grounds that this mark, its registration and common law use
was not pleaded by Opposer as a basis for opposing
Applicant’s application.’” Br. p. 11. In general, because
applicant did not file a brief, the objections would be
considered waived; however, in view of the stipulation we
consider the objection to be maintained. The mark SEACRET
DESTINATIONS was not pleaded and applicant’s objection is
sustained to the extent that we have not considered use of
this mark. However, we have considered the evidence
pertaining to applicant’s provision of travel agency
services, albeit under a different mark, to the extent it
shows that such services are related to opposer’s other
services (restaurant, bar, hotel, travel promotion and
entertainment services) and the complementary nature of
these services.
Standing and Priority
Opposer has made its pleaded registration properly of
record. Registration No. 2102604 is for the mark SEACRETS
in typed form for “restaurant and bar services.” The
registration issued on October 7, 1997, based on an
application filed on October 31, 1995. Section 8 and 15
affidavits have been accepted and acknowledged, and the
Opposition No. 91190886
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registration has been renewed. In view thereof, opposer has
established its standing to oppose registration of
applicant’s mark. In addition, its priority is not in issue
as to its restaurant and bar services. See King Candy Co.,
Inc. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974).
Moreover, opposer has established prior use of its mark
SEACRETS in connection with various other goods and
services, in particular, hotel services. Applicant has
admitted that it has not begun use of the mark in the United
States.2 Therefore, the date of first use upon which
applicant may rely is September 17, 2007. Opposer has
established that it has used the mark SEACRETS in connection
with the provision of nightclub and entertainment services
since 1988,3 hotel services since at least as early as the
spring of 1999,4 and promoting travel to other destinations
since approximately 1994.5
Likelihood of Confusion
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the probative facts
in evidence that are relevant to the factors set forth in In

2 Answer ¶ 2; Opp. Trial Exh. 142 (Applicant’s Response to
Admission Request No. 6).

3 Moore Test. pp. 12, 87.

4 Moore Test. p. 92.

Opposition No. 91190886
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re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ
563 (CCPA 1973). See also, In re Majestic Distilling Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
We begin with the factor of fame because fame “plays a
‘dominant’ role in the process of balancing the du Pont
factors.” Recot Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d
1894, 1897 (Fed. Cir. 2000). “[T]he fame of a mark may be
measured indirectly, among other things, by the volume of
sales and advertising expenditures of the goods traveling
under the mark, and by the length of time those indicia of
commercial awareness have been evident.” Bose Corp. v. QSC
Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1305
(Fed. Cir. 2002).
Opposer has expended significant sums on a broad-based
advertising program in a variety of media, including, print,
cable television (e.g., ESPN, USA, MTV, CNN, TNT), radio
(approximately 5000 radio spots per year), Internet and
billboards. See Moore Test. pp. 154-171, and Figgs Test.
pp. 105-124. The advertising, other than on the Internet,
is only regional and not national in scale. For example,
the print advertising only appears in publications
circulated in the Delmarva (Delaware, Maryland, Virginia)
Peninsula. In addition, the radio spots are limited to the
same region. In keeping with this localized strategy,

5 Figgs Test. pp. 166-169; Moore Test. pp. 76-77.
Opposition No. 91190886
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opposer also routinely uses banner pulls on airplanes that
traverse the beach and “bus wraps” on Ocean City, Maryland
buses where the entire bus is dedicated solely to the
promotion of the SEACRETS resort.
Opposer has used its mark for more than 22 years and
has generated significant income, hosting nearly one million
people per year at its complex. It has received numerous
awards, including, in 2010, being recognized as the 8th
largest nightclub in the entire United States. We note,
however, that its restaurants, bars, nightclub and hotel are
in one location, on the Mid-Atlantic coast in Ocean City,
Maryland. In addition, the record shows that opposer’s
promotion and marketing of its services under this mark, is
concentrated in the region around Ocean City, Maryland.
However, by seeking a geographically unrestricted mark, we
must consider that applicant seeks to market its goods and
services throughout the United States, including in Ocean
City, Maryland, and the surrounding region. Thus, while
this evidence falls short of demonstrating nationwide fame,
it does demonstrate that opposer has attained a substantial
degree of renown in the Mid-Atlantic region surrounding
Ocean City, Maryland. See ProQuest Information and Learning
Co. v. Island, 83 USPQ2d 1351 (TTAB 2007). Strength is
measured in degrees and while the record evidence does not
show a level of consumer exposure and recognition to warrant
Opposition No. 91190886
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a finding of fame, it does establish SEACRETS as a strong
mark with significant regional renown which should be
accorded a wider scope of protection. Lacoste Alligator
S.A. v. Maxoly Inc., 91 USPQ2d 1594, 1597 (TTAB 2009)
(“Because of the extreme deference that we accord a famous
mark in terms of the wide latitude of legal protection it
receives, and the dominant role fame plays in the likelihood
of confusion analysis, it is the duty of the party asserting
that its mark is famous to clearly prove it”); Leading
Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901
(TTAB 2007).
We now consider the similarity or dissimilarity of the
marks when compared in their entireties in terms of
appearance, sound, connotation and commercial impression.
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Cir. 2005).
The points of similarity between opposer’s mark
SEACRETS and applicant’s mark SECRETS LINE are greater than
the points of dissimilarity. The dominant portion of
applicant’s mark is the first term SECRETS. Applicant has
disclaimed the word LINE and the record shows that LINE is
merely descriptive of applicant’s hotel related services
wherein it “distributes hotel stays of affiliated hotels all
Opposition No. 91190886
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over the world,”6 because it immediately describes a feature
of applicant’s services, namely, the provision of a line of
hotels.7
Opposer’s mark SEACRETS is phonetically identical to
the SECRETS portion of applicant’s mark. The only
difference in appearance of the common term is the addition
of the letter “A” to opposer’s mark, which merely serves as
a play on its location near the ocean. While opposer’s
mark, when viewed, has the additional connotation of the
“sea,” it retains the connotation of “secrets” which is the
same as applicant’s mark SECRETS. We note that opposer
presented evidence to support this conclusion. Opposer
conducted a study of the visitors to its website and found
that 27% of them used the natural spelling “secrets” to
locate SEACRETS. Figgs Test. pp. 145-150. The overall
commercial impressions of SEACRETS and SECRETS LINE is very
similar.
Thus, we find the marks to be similar in appearance,
sound, connotation and commercial impression and this factor
weighs in favor of a likelihood of confusion.

6 Opp. Trial Exh. 143 (Answer to Interrogatory No. 7 wherein
applicant defines LINE as “selection or collection of exclusive
hotel properties”).

7 Opp. Trial Exhs. 171 (third-party registrations with LINE
disclaimed) and 356 (definitions for the word LINE).

Opposition No. 91190886
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We turn then to a consideration of the goods and
services, channels of trade and classes of purchasers. We
must make our determinations under these factors based on
the goods and services as they are recited in the
registration and application. See In re Elbaum, 211 USPQ
639 (TTAB 1981). The goods and services need not be
identical or directly competitive in order for there to be a
likelihood of confusion. Rather, the respective goods and
services need only be related in some manner or the
conditions surrounding their marketing be such that they
could be encountered by the same purchasers under
circumstances that could give rise to the mistaken belief
that the goods and services come from a common source. In
re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984).
As noted above, the opposition has been brought against
the goods and services in International Classes 16, 35, 39,
41 and 43. It is opposer’s position that applicant’s goods
and services are essentially hotel services that also
include goods and services commonly associated with hotel,
bar and restaurant services. The evidence of record shows
that applicant “distributes hotel stays” by advertising and
promoting third-party hotels or villas and taking
reservations through its website.8

8 App. Trial Exhs. 4 and 5; Opp. Trial Exh. 142.
Opposition No. 91190886
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In addition to its registered restaurant and bar
services, opposer provides entertainment and hotel services
under the SEACRETS mark. Opposer also uses its SEACRETS
mark in connection with a variety of ancillary goods and
services relevant to each of the opposed classes. While
opposer does not actually publish travel maps and brochures,
it sponsors such publications and it places its
advertisements in such publications which are distributed in
the same channels as applicant’s identified travel maps and
brochures in International Class 16.
Opposer has for over a decade engaged in cooperative
advertising with other companies such as Air Jamaica and
Couples Resort and has promoted its own “Gold Card” to
promote customer loyalty on its property. These services
are similar to the “advertising and promotional campaigns
for third parties” and “distribution of prepaid stored value
cards for the purpose of promoting and rewarding loyalty” in
International Class 35 of the application.
With regard to applicant’s International Class 39
services, opposer submitted several third-party use-based
registrations that include both restaurant, bar and/or hotel
services, and the arranging of various types of
transportation services to support a finding that opposer’s
restaurant and bar services are related to applicant’s
Opposition No. 91190886
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various travel arranging services.9 Third-party
registrations which individually cover the services in issue
and are based on use in commerce may serve to suggest that
the listed services are of a type which may emanate from a
single source. See In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993). We find the third-party
registrations probative on this issue. Moreover, we observe
that in 2003, opposer, through a sister company, began
offering its travel agency services which include making
bookings for transportation.10
As to applicant’s services in International Classes 41
and 43, opposer has used its SEACRETS mark in connection
with a multitude of entertainment services (hosting nightly
concerts, parties, fireworks, beauty pageants, etc.) and has
provided reservation services for its hotel services.11
In view thereof, we find opposer’s restaurant, bar,
nightclub, hotel and affiliated services to be related to

9 Opp. Trial Exh. 172 (e.g., Reg. No. 3002499 for making
reservations and bookings for transportation, arranging of
cruises, hotel, restaurant and bar services; Reg. No. 3182547 for
making reservations and bookings for transportation, booking
seats for travel and escorting of travelers and restaurant
services; Reg. No. 1866988 for arranging of excursions for others
and hotel, restaurant and bar services; and Reg. No. 3021969 for
travel reservation services, escorting of travelers, hotel and
restaurant services)

10 Moore Test. pp. 54-57.

11 While taking reservations for its own hotel would not be
registrable as a separate service, it supports the close
relationship between the provision of hotel accommodations and a
hotel reservation service.
Opposition No. 91190886
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applicant’s goods and services in each of the opposed
classes. At a minimum, all of applicant’s goods and
services are related to opposer’s restaurant, bar and hotel
services as to be likely to cause confusion as to
sponsorship. General Mills Inc. v. Fage Dairy Processing
Industry SA, 100 USPQ2d 1584, 1594 (TTAB 2011), quoting
Hilson Research, Inc. v. Society for Human Resource
Management, 27 USPQ2d 1423, 1429 (TTAB 1993) (likelihood of
confusion encompasses confusion of sponsorship, affiliation
or connection). See also Visa International Service Ass’n
v. Visa Hotel Group, Inc., 561 F. Supp. 984, 218 USPQ 261
(D.C.Nev. 1983) (“Although these financial and hotel
services are different and noncompetitive, they exist as
complementary products in the same general industry, i.e.,
the travel and entertainment industry, and they are
definitely related.”)
Moreover, because there are no limitations as to
channels of trade or classes of purchasers in the
application, we must consider all ordinary channels of trade
and classes of purchasers for such goods and services. See
Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62
USPQ2d 1001 (Fed. Cir. 2002); Canadian Imperial Bank v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813 (Fed. Cir.
1987); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB
2003) and In re Smith and Mehaffey, 31 USPQ2d 1531 (TTAB
Opposition No. 91190886
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1994). Thus, applicant’s channels of trade and classes of
customers encompass opposer’s presumed and established
channels of trade and classes of customers.
In view of the above, the du Pont factors of the
similarity of the goods and services, the channels of trade
and classes of purchasers favor a finding of likelihood of
confusion.
On balance, the relevant du Pont factors weigh in favor
of a likelihood of confusion. In view of the strength of
opposer’s mark, the similarity of the marks, the related
nature of the goods and services, and the overlap in the
channels of trade and classes of customers, we conclude that
there is a likelihood of confusion between opposer’s mark
SEACRETS and applicant’s standard character mark SECRETS
LINE such that registration of applicant’s mark is barred
under Trademark Act Section 2(d). As noted above, applicant
submitted very limited evidence, did not take any testimony
or present any legal argument to rebut opposer’s showing.
To the extent there is any doubt, we must resolve that
doubt in favor of opposer as the prior user and registrant.
Giant Food, Inc. v. Nation’s Foodservice, Inc., Giant Food,
Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 395 (Fed. Cir. 1983).
Opposition No. 91190886
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In view of our decision on opposer’s claim of
likelihood of confusion, we do not reach the claim of false
suggestion of a connection.
Decision: The opposition is sustained as to opposer’s
claim of priority and likelihood of confusion under Section
2(d) of the Trademark Act. Registration is refused as to
the goods and services in International Classes 16, 35, 39,
41 and 43. The application will proceed to registration in
International Classes 36 and 38.