Preferred Hotel Group, Inc.

Trademark Trial and Appeal Board

Nov 21, 2016

No. 86471867 (T.T.A.B. Nov. 21, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: November 21, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Preferred Hotel Group, Inc.
_____

Serial No. 86471867
_____

Melanie Howard and Bess Morgan of Loeb & Loeb LLP,
for Preferred Hotel Group, Inc.
Annie M. Noble, Trademark Examining Attorney, Law Office 109,
Michael Kazazian, Managing Attorney.
_____

Before Taylor, Mermelstein and Heasley,
Administrative Trademark Judges.

Opinion by Heasley, Administrative Trademark Judge:
Preferred Hotel Group, Inc. (“Applicant”) seeks registration on the Principal
Register of the following mark

for “hotel services; resort hotel services; reservation of temporary accommodation;
provision of hotel accommodation; provision of hotel venues for meetings and
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conferences; providing advice and information to tourists and travelers on destination
hotels” in International Class 43.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act on the ground that it so resembles the
registered mark CONNECT (in standard characters) for “providing facilities for
business meetings; providing business meeting facilities featuring lounge facilities
for businesspeople and business executives; providing business suites in the nature
of co-working facilities equipped with office equipment” in International Class 35 and
for “providing conference rooms; provision of conference center facilities” in
International Class 43 that it is likely to cause confusion or mistake, or to deceive.2
15 U.S.C. §§ 1052(d), 1053.
When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the refusal to register.
I. Analysis
We base our determination of likelihood of confusion under Section 2(d) on an

1 Application Serial No. 86471867 was filed on December 4, 2014, based upon applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act. The mark consists of a design of four arrows forming a clover with a dot in
the middle above the term CONNECT in stylized letters stacked above the terms
PREFERRED HOTELS & RESORTS in stylized letters. In response to the Examining
Attorney’s requirement that Applicant disclaim the descriptive wording PREFERRED
HOTELS & RESORTS, Applicant submitted a disclaimer of HOTELS & RESORTS and a
claim of acquired distinctiveness (based on use and prior registrations). Both amendments
were accepted by the Examining Attorney, although they do not appear in the Office’s
electronic database entry for this application. Because the amendments were offered and
accepted, we consider the application amended accordingly.

2 Registration No.4690936, issued on the Principal Register on February 24, 2015.
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analysis of all of the probative facts in evidence that are relevant to the factors
enunciated in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563,
567 (CCPA 1973) (“DuPont”) cited in B&B Hardware, Inc. v. Hargis Ind., Inc., __U.S.
__, 135 S.Ct. 1293, 113 USPQ2d 2045, 2049 (2015). See also In re Majestic Distilling
Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
In the course of applying the DuPont factors, we bear in mind the fundamental
principles underlying Section 2(d), which are to prevent consumer confusion as to
commercial sources and relationships, and to protect registrants from damage caused
by registration of confusingly similar marks. Park ‘N Fly, Inc. v. Dollar Park and Fly,
Inc., 469 U.S. 189, 224 USPQ 327, 331 (1985); Qualitex Co. v. Jacobson Prods. Co.,
514 U.S. 159, 34 USPQ2d 1161, 1163 (1995); DuPont, 177 USPQ at 566.
We have considered each DuPont factor that is relevant, and have treated any
other factors as neutral. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378,
78 USPQ2d 1944, 1947 (Fed. Cir. 2006); ProMark Brands Inc. v. GFA Brands, Inc.,
114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for
which we have evidence, we focus our analysis on those factors we find to be
relevant.”).
A. Relationship of the Services and Channels of Trade
We first consider the relatedness of Applicant’s and Registrant’s respective
services and channels of trade under the second and third DuPont factors. DuPont,
177 USPQ 567. Applicant’s “provision of hotel venues for meetings and conferences”
is encompassed by Registrant’s broader identification describing its provision of
meeting and conference facilities. Applicant’s narrower description, limited to hotel
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venues, is thus a subset of possible meeting and conference venues covered by
Registrant’s identification. See In re Midwest Gaming & Entertainment LLC, 106
USPQ2d 1163, 1165 (TTAB 2013) (registrant’s identified “restaurant and bar
services” encompass and are legally identical to Applicant’s identified “bar services
located in a casino”).
Hotels frequently provide such meeting and conference places, as evidenced by
numerous use-based third-party registrations the Examining Attorney has
introduced, e.g.:
Service Mark Registration
No.
Relevant Services

4518873 Hotel services; providing
conference rooms

4700975 Hotel accommodation services;
hotels; provision of conference,
exhibition and meeting facilities

4804796 Hotels; hotel services for the
provision of general purpose
facilities for business conferences,
meetings, exhibitions and/or
training sessions; provision of hotel
venues, namely, providing
temporary accommodations for
business exhibitions, fairs,
conference, congresses, lectures
and/or meetings
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Service Mark Registration
No.
Relevant Services

4762995 Providing temporary accommo-
dations; hotel, bar and restaurant
services; providing social meeting,
banquet, social function,
conference, exhibition and meeting
facilities
NAPLES GRANDE BEACH
RESORT
4733250 Temporary accommodation, resort
lodging, hotel, motel, café,
restaurant, bar, and cocktail
lounge services; provision of
general purpose premises for
receptions, conferences,
conventions, exhibitions, seminars
and meetings
ARIZONA GRAND
RESORT & SPA
4730853 Hotel services; resort lodging
services; providing conference,
exhibition and meeting facilities
PRIDE HOSPITALITY 4780977 Hotels; hotel services; provision of
conference, exhibition, and meeting
facilities
SERVICE FROM THE
HEART
4826930 Providing temporary
accommodations; hotel, bar and
restaurant services; providing
social meeting, banquet, social
function, conference, exhibition
and meeting facilities3

These third-party registrations serve to suggest that both hotel services and
meeting and conference services may be provided by the same source under the same
mark. In re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988)
aff’d per curiam 864 F.2d 149 (Fed. Cir. 1988); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1091-

3 Office Action of October 13, 2015, pp. 6, 9, 11, 17, 20, 23, 26, 29.
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92 (TTAB 2016).
The Examining Attorney has also introduced evidence of various hotels offering
meeting and conference services, e.g.:
• The “Visit Myrtle Beach South Carolina” promotional website provides “a
quick reference to hotels and facilities offering meeting and function space.”4
• Meetings.com enables its users to book meeting places at hotels.5
• Marriott provides conference centers for “the Ultimate Meeting experience”:
6
• The Florida Hotel and Conference Center in Orlando provides meeting facilities:

4 VisitMyrtleBeach.com Oct. 13, 2015, Office Action of October 13, 2015, p. 35.
5 Meetings.com, Oct. 13, 2015, Office Action of October 13, 2015, pp. 36-37.
6 Marriott.com/conference-centers, Oct. 13, 2015, Office Action of October 13, 2015, p. 38.
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7
• And the Georgetown University Hotel and Conference Center provides
“elegant and modern meeting and event space”:
8

7 TheFloridaHotelOrlando.com, Oct. 13, 2015, Office Action of Oct. 13, 2015, p. 39.
8 ACC-GUHotelAndConferenceCenter.com, Oct. 13, 2015, Office Action of Oct. 13, 2015, p.
40.
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These examples show how hotels commonly provide meeting and conference
services under the same mark, and demonstrate how the services are related. See,
e.g., In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba
Med. Sys. Corp., 91 USPQ2d 1266, 1268-69, 1271-72 (TTAB 2009).
In its reply brief, Applicant asserts that Registrant, in the course of prosecuting
the application that matured into the subject Registration, represented that it
restricted its use of its CONNECT mark to members of its health club.9 Applicant
made the same assertion in its first Response to Office Action,10 but did not submit
evidence in support of that assertion until it filed its reply brief, to which it attached
excerpts from the Registration’s prosecution history file.11 “In the context of an ex
parte appeal of a Section 2(d) refusal, the file of the cited registration … is not
automatically of record. Rather, for the prosecution file history of a cited
registration… to be considered, it must be timely introduced as evidence.” TBMP
§ 1208.02 (2016). The record in an application should be complete prior to the filing
of an appeal. Trademark Rule 2.142(d), 37 CFR § 2.142(d). Exhibits attached to a
brief that were not made of record during examination are untimely, and generally
will not be considered. Id. In re Compania de Licores Internacionales S.A., 102
USPQ2d 1841, 1843 (TTAB 2012). Applicant was afforded the opportunity to place
this evidence in the record when it sought reconsideration, but failed to do so. See In

9 Applicant’s reply brief, p. 7 and exhibits A and B thereto, 13 TTABVUE 12, 18 et seq.
10 September 30, 2015 Response to Office Action, p. 13.
11 Reply brief, exhibits A and B, 13 TTABVUE 18 et seq.
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re Fiat Grp. Mktg. & Corp. Commc’ns S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014)
(untimely evidence given no consideration); In re Pedersen, 109 USPQ2d 1185, 1188
(TTAB 2013); In re Jump Designs LLC, 80 USPQ2d 1370, 1372 (TTAB 2006). This
evidence was not made of record during examination and will not be considered.
In any event, the services identified in the Registration are not limited to members
of a health club, and we will not read such a limitation into it. See Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-62 (Fed.
Cir. 2014); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983)
quoted in In re Mr. Recipe, 118 USPQ2d at 1091.
Applicant argues that the inclusion of its “house mark,” PREFERRED HOTELS
& RESORTS, at the base of the applied-for mark “focuses the locus of the services
offered, and the consumer base, squarely within its Preferred Hotels & Resorts hotel
properties.”12 We shall address Applicant’s house mark argument at greater length
below in the context of considering the first DuPont factor, the similarity or
dissimilarity of the marks. For our present purpose of considering the second and
third DuPont factors, though, the Registration’s identified services—providing
business meeting and conference facilities—encompasses Applicant’s identified
service of providing “hotel venues for meetings and conferences,” with no restriction
on where the services are rendered. Because the services are in part identical, we
must presume that the channels of trade and classes of purchasers (in this case,
business travelers) are the same. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905,

12 Applicant’s reply brief, p. 6, 13 TTABVUE 11.
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1908 (Fed. Cir. 2012); In re Hartz Hotel Svcs., Inc., 102 USPQ2d 1150, 1151 (TTAB
2012); In re Midwest Gaming & Ent. LLC, 106 USPQ2d 1163, 1165-66 (TTAB 2013).
For these reasons, the second and third DuPont factors weigh in favor of finding
a likelihood of confusion.
B. Comparison of the Marks
Under the first DuPont factor, we compare Applicant’s and Registrant’s marks in
their entireties, taking into account their appearance, sound, connotation and
commercial impression. DuPont, 177 USPQ at 567; Stone Lion, 110 USPQ2d at 1160;
Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005).
1. The Similarity or Dissimilarity of the Marks
Registrant’s mark consists of CONNECT in standard characters, whereas
Applicant’s composite mark consists of a cloverleaf design atop the word CONNECT,
in large stylized letters, underscored by the “house mark” PREFERRED HOTELS &
RESORTS in smaller letters:

Applicant maintains that the Examining Attorney focused on the marks’ common
term, CONNECT, disregarding the other design and literal elements in its composite
mark, in violation of the anti-dissection rule.13 We are mindful that while the

13 Applicant’s brief p. 5, 8 TTABVUE 6.
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similarity or dissimilarity of the marks is determined based on the marks in their
entireties, “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., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) quoted in Bond v.
Taylor, 119 USPQ2d 1049, 1055 (TTAB 2016). In a composite mark comprising a
design and words, “the verbal position of the mark is the one most likely to indicate
the origin of the goods to which it is affixed.” In re Viterra, 101 USPQ2d at 1908, 1911
(quoting CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir
1983)). See also Bond v. Taylor, 119 USPQ2d at 1055; In re Dakin’s Miniatures Inc.,
59 UPSQ2d 1593, 1596 (TTAB 2001); In re Appetito Provisions Co., Inc., 3 USPQ2d
1553, 1554 (TTAB 1987).
Here, the word element , prominently displayed in boldly
stylized letters, is clearly the dominant element of Applicant’s mark, the part that
business travelers would use to request Applicant’s meeting and conference services.
It is pronounced the same as Registrant’s CONNECT mark, and appears virtually
the same, save for a slight stylization, which Registrant’s standard character mark
could emulate. In re Viterra, 101 USPQ2d at 1909; In re Morinaga Nyugyo Kabushiki
Kaisha, 2016 WL 5219811, *5 (TTAB 2016). The meaning of “CONNECT” is also the
same. See In re Aquamar, Inc., 115 USPQ2d 1122, 1126-27 (TTAB 2015).
Above it is the design element, four arrows curving to form a cloverleaf, then
converging upon a central dot. Viewed together with the word , the
design could suggest that business travelers from disparate compass points can come
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together at a single point to connect with one another. So if anything, the design
element serves to emphasize the word directly beneath it, from which it derives its
significance.
Applicant nonetheless insists that its house mark, PREFERRED HOTELS &
RESORTS, which appears at the bottom of its applied-for mark, weighs against a
likelihood of confusion.14
2. Applicant’s House Mark
There is no dispute that Applicant owns over a dozen registrations for
PREFERRED-prefix marks,15 the most pertinent of which are:
• Registration No. 4497069, for PREFERRED HOTELS & RESORTS
(“HOTELS & RESORTS” disclaimed, “PREFERRED” acquired
distinctiveness under Section 2(f)) is a collective membership mark
“indicating membership in an association of hotels” in Class 200.16

• Registration No. 4504212, also for PREFERRED HOTELS & RESORTS
(“HOTELS & RESORTS” disclaimed, “PREFERRED” acquired
distinctiveness under Section 2(f)) is for “hotel directories” in
International Class 16, and “hotel services, resort hotel services, hotel
accommodation reservation services, provision of temporary hotel
accommodation, provision of hotel facilities for meetings and conferences,
providing reviews of hotels, hotel advisory and information services to
others, making hotel reservation and bookings for temporary lodging
services” in International Class 43.17

14 Applicant’s brief, pp. 7-10, 8 TTABVUE 8-11.
15 See generally Applicant’s September 30, 2015 Response to Office Action, pp. 7-8.
16 Registration No. 4497069 issued on March 18, 2014.
17 Registration No. 4504212 issued on April 1, 2014.
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Applicant maintains that the presence of its house mark at the base of the applied-
for mark suffices to distinguish it from the cited registration, as it immediately
informs consumers of the source of Applicant’s services.18
A house mark serves as an “umbrella” for multiple product or service marks
emanating from a single source. See In re Royal BodyCare, Inc., 83 USPQ2d 1564,
1568 (TTAB 2007); Amica Mutual Insurance Company v. R.H. Cosmetics Corp., 204
USPQ 155, 161 (TTAB 1979). Familiar examples are FORD MUSTANG and
KELLOGG’S FROOT LOOPS. Bose Corp. v. QSC Audio Prod., Inc., 293 F.3d 1367,
63 USPQ2d 1303, 1308 (Fed. Cir. 2002); 1 J. Thomas McCarthy, MCCARTHY ON
TRADEMARKS AND UNFAIR COMPETITION § 7:5 (4th ed. 2016). See generally TMEP §
1402.03(b).
As a general rule, an applicant’s addition of its house mark to one of two otherwise
similar marks will not avoid a likelihood of confusion between the marks. E.g., In re
Bay State Brewing Co., 117 USPQ2d 1958, 1965 (TTAB 2016) (citing In re Mighty
Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed. Cir. 2010)); General Mills Inc.
v. Fage Dairy Proc. Ind. SA, 100 USPQ2d 1584, 1602 (TTAB 2011) judgment set aside,
opinion not vacated 110 USPQ2d 1679 (TTAB 2014); In re Fiesta Palms LLC, 85
USPQ2d 1360, 1364 (TTAB 2007). See TMEP § 1207.01(b)(iii). This is because
consumers are likely to infer that both marks emanate from or are in some way
associated with the house mark owner. E.g., In re C.F. Hathaway Co., 190 USPQ 343,
344 (TTAB 1976) (HATHAWAY GOLF CLASSIC for knitted sports shirts confusingly

18 Applicant’s brief, pp. 7-10, 8 TTABVUE 8-11.
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similar to GOLF CLASSIC for men’s hats). For example, consumers could believe that
the house mark owner is simply the previously anonymous but now identified source
of the services provided under the other mark. Fiesta Palms, 85 USPQ2d at 1366-67
(“a consumer who has been told about the advantages of registrant’s MVP casino
services is likely to believe that the CLUB PALMS MVP casino services is simply the
now identified source of the previously anonymous MVP casino services.”). Or they
could believe that the house mark owner is the successor-in-interest, licensee,
endorser or affiliate of the other mark’s owner. See In re Riddle, 225 USPQ 630, 632
(TTAB 1985). In these ways, use of a house mark can aggravate, rather than mitigate,
likelihood of confusion. In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985)
(applicant’s LE CACHET DE DIOR similar to the registered mark CACHET). See
Bayer Consumer Care AG v. Belmora LLC, 110 USPQ2d 1623, 1636 n.81 (TTAB 2014)
aff’d 819 F.3d 697 (4th Cir 2016).
An exception to this general rule occurs when one mark is so highly suggestive or
descriptive, or so commonly used or registered, that the addition of a house mark to
the other mark renders the two marks sufficiently distinguishable. In re Christian
Dior, 225 USPQ at 534; In re Fiesta Palms LLC, 85 USPQ2d at 1364. For example,
in Top Tobacco LP v. North Atlantic Operating Co., 101 USPQ2d 1163 (TTAB 2011),
Top Tobacco, which claimed prior rights in the mark CLASSIC CANADIAN for
smoking tobacco, sought inter alia to cancel North Atlantic’s registration for ZIG ZAG
CLASSIC AMERICAN BLEND for smoking tobacco based in part on likelihood of
confusion. The Board found that:
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As to North Atlantic’s registered mark, ZIG ZAG CLASSIC
AMERICAN BLEND, while it contains the same phrase “CLASSIC
AMERICAN BLEND” as the marks discussed above, the addition of the
distinctive house mark ZIG ZAG to the highly suggestive phrase is
sufficient in this case to outweigh the similarities. Our comparison of
these marks is quite different due to the presence of this distinctive
house mark. Indeed, the Board has frequently determined that
additional distinctive elements, such as North Atlantic’s ZIG ZAG house
mark, may avoid likely confusion where the marks in their entireties
convey significantly different commercial impressions or the matter
common to the marks is so suggestive or weak that any source-
indicating value it has is overwhelmed by the addition of an arbitrary,
distinctive element.

Id. at 1174 (citing Rocket Trademarks Pty Ltd. v Phard S.p.A., 98 USPQ2d 1066
(TTAB 2011) (ZU ELEMENTS (stylized) not confusingly similar to ELEMENTS in
connection with identical clothing goods due, in part, to suggestiveness of term
“elements”); and Knight Textile Corp. v. Jones Investment Co., 75 USPQ 1313 (TTAB
2005) (mark ESSENTIALS found so highly suggestive that addition of house mark
NORTON MCNAUGHTON sufficed to distinguish the marks)).
3. The Strength or Weakness of Registrant’s Mark
Applicant accordingly argues that the cited CONNECT mark is so highly
suggestive, as used in connection with its services, that Applicant’s house mark
suffices to distinguish the two.19 It states, “The registrant provides facilities for
business meetings and conferences, including lounge facilities where people meet,
confer, and connect. As such, the term CONNECT is highly suggestive, at best,
when used in connection with the registrant’s services as it indicates to consumers

19 Applicant’s arguments involve the fifth, sixth and ninth DuPont factors, pertaining to the
strength of the registered mark, the number and nature of similar marks in use on similar
services, and the presence of a house mark.
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the intended use and purpose of the facilities that the registrant provides under the
mark.”20 It points to third-party registrations in the hospitality field containing
CONNECT:21

20 Applicant’s brief, p. 13, 8 TTABVUE 14.
21 September 30, 2015 Response to Office Action pp. 14-19, March 25, 2016 request for
reconsideration pp. 14-18.
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This evidence fails to prove Applicant’s point, that the registered CONNECT
mark is so highly suggestive or commonly used in connection with business meeting
and conference facility services that Applicant’s PREFERRED HOTELS & RESORTS
house mark suffices to distinguish the applied-for mark. In In re Hartz Hotel Services,
102 USPQ2d 1150, evidence of widespread third-party use and registration of the
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term “GRAND HOTEL” for hotel services served to show that the term was highly
suggestive of an “impressive, stately, magnificent or first-rate hotel,” and could be
distinguished by the addition of a geographic designation in the applicant’s GRAND
HOTEL NYC mark. Id. at 1152-55. Here, in contrast, Applicant has submitted no
evidence of the extent of commercial use of the third-party marks or the familiarity
of the relevant purchasing public, i.e., business travelers, with them. See In re
Morinaga Nyugyo Kabushiki Kaisha, 2016 WL at *8 (third-party registrations not
evidence of market weakness). Although third-party registrations may be relevant to
the conceptual strength of a registered mark in relation to the services identified in
the registration, id. at *9, Applicant cites only one registration relevant to
Registrant’s identified business meeting and conference facility services: Registration
No. 3664850, EAT. DRINK. CONNECT., for “restaurant, café, bar and cocktail lounge
services; provision of general purpose facilities for meetings.” The rest of Applicant’s
cited third-party registrations range so far afield in their identified services—e.g.,
Internet services, food ordering, preparation and delivery services, financing and loan
services, travel agency and booking services—as to be of little or no probative value.
One registration (with no evidence of use) is insufficient to conclude that CONNECT
is highly suggestive or descriptive as an indication of source for the services at issue
here.
Even if, as Applicant argues, the term “CONNECT” is used in other sectors of the
hospitality field, and even if it could conceivably suggest the provision of facilities in
which business travelers can meet and confer Registrant’s CONNECT mark is not
so weak or highly suggestive that it is distinguished by Applicant’s addition of its
Serial No. 86471867
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house mark. See In Re Fiesta Palms, LLC, 85 USPQ2d at 1366 (“Because applicant
has not demonstrated that MVP is a highly suggestive term for casino services, the
addition of the house mark CLUB PALMS is not sufficient to distinguish these
otherwise identical marks….”); In re Christian Dior, S.A., 225 USPQ at 535 (“we
reject applicant’s argument that ‘cachet’ is a weak mark entitled only to a narrow
scope of protection and are of the view that ‘CACHET,’ the common term to
applicant’s mark and registrant’s mark, is not of such nature that the addition of a
house mark to the term is sufficient to render the marks sufficiently distinguishable
to obviate likelihood of source confusion.”).
Moreover, Applicant’s house mark is not very distinctive; it consists of the
disclaimed descriptive or generic terms HOTELS & RESORTS, preceded by the term
PREFERRED, which suggests that its member hotels and resorts are preferred by
their guests.22 Applicant claims that its house mark is “well known,” but submits no
market evidence in support of this claim, aside from citing to its prior registrations,
in which its marks bearing the term “PREFERRED” were registered under Section
2(f).23 In this application, Applicant has submitted a claim of acquired distinctiveness
as to the term PREFERRED, and has disclaimed HOTELS & RESORTS. All in all,
then, Applicant’s addition of its house mark to its applied-for mark does not suffice
to distinguish it from the cited Registration.

22 “Preferred”: “more desirable than another”, “favorite. Being a favorite: favored, favorite,
popular, well-liked” TheFreeDictionary.com, Office Action of March 30, 2015, pp. 6-7.
23 See generally Applicant’s September 30, 2015 Response to Office Action, pp. 7-8.
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4. Commercial Impression
Considering the respective marks in their entireties, as we must, Envirotech Corp.
v. Nat’l Svc, Inds., Inc., 197 USPQ 292, 295-96 (TTAB 1977), we find that the design
feature of Applicant’s mark, , is relatively nondescript and minor,
deriving whatever significance it has from the prominently displayed and dominant
“CONNECT” component, which overshadows, both in size and significance,
Applicant’s house mark, appearing in small type beneath it. The wording in
Applicant’s mark — and in particular the large display of “CONNECT” — clearly
dominate the design element in the mark. See In re Viterra, 101 USPQ2d at 1908,
1911. Thus, while we have fully considered Applicant’s design element as a part of
the applied-for mark, we find that in this case it does not mitigate the confusion that
is likely to occur.
In appearance, sound, connotation, and commercial impression, Applicant’s mark
is quite similar to Registrant’s CONNECT mark. We find, therefore, that the first
DuPont factor weighs in favor of finding a likelihood of confusion.
II. Conclusion
After considering all of the evidence of record and arguments pertaining to the
DuPont likelihood of confusion factors, the first, second and third DuPont factors
favor a finding of likelihood of confusion, and the fifth, sixth and ninth DuPont
factors, pertaining to the strength of the registered mark, the number and nature of
similar marks in use on similar services, and the presence of a house mark, are
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neutral. Accordingly, we find that there is a likelihood of confusion between
Applicant’s and Registrant’s marks for the identified services.
Decision: The refusal to register Applicant’s mark is affirmed.