Silversea Cruises Ltd.

Trademark Trial and Appeal Board

Jun 29, 2020

87603644 (T.T.A.B. Jun. 29, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: June 29, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Silversea Cruises Ltd.
_____

Serial No. 87603644
_____

James David Johnson of Johnson & Martin PA,
for Silversea Cruises Ltd.
Clare Cahill, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Kuhlke, Lykos and Coggins,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Silversea Cruises Ltd. (“Applicant”) seeks registration on the Principal Register
for the mark SILVER MOON, in standard characters, for services ultimately
identified as:
Cruise ship services; arranging and conducting cruises for
others; arranging and conducting travel tours for others,
namely, arranging transport for travelers and providing
transport for guided tours; organizing and arranging shore
excursions from cruise ships, namely, providing transport
for excursions and making reservations and bookings for
excursion transportation; transportation of passengers by
ship; arranging air transportation for others; travel and
Serial No. 87603644
- 2 -
tour arrangement services, namely, coordinating travel
arrangements and tour travel arrangements for
individuals and groups; transport of passengers and of
goods; travel tour operating services, namely, arranging
transport for travelers and providing transport for guided
tours; provision of information and advice relating to all
the aforesaid services, in International Class 39 and;
Arranging and conducting travel tours for others in the
nature of guided tours in cities or nature settings;
organizing and arranging shore excursions from cruise
ships, namely, arranging and conducting tours ranging
from cultural, culinary, and nature centric expeditions;
tour arrangement services, namely, arranging cultural,
culinary, and naturalistic tours; travel tour operating
services, namely, arranging and conducting guided
cultural, culinary, and active tours, in International Class
41.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s mark, when used in connection with the identified services, so resembles
the registered standard character mark SILVER MOON for “hotel and motel
services,” in International Class 42, as to be likely to cause confusion, mistake or
deception.2
When the Section 2(d) refusal was made final, Applicant appealed and requested
reconsideration. On August 19, 2019, the Examining Attorney denied the request, the
appeal resumed and briefs have been filed. We affirm the refusal to register.

1 Application Serial No. 87603644 was filed on September 11, 2017 under Sections 1(b), 44(d)
and 44(e) of the Trademark Act, 15 U.S.C. §§ 1051(b); 1126(d)-(e).

2 Registration No. 1896651, issued on May 30, 1995, renewed.
Serial No. 87603644
- 3 -
I. Evidentiary Matter
The Examining Attorney’s objection to Applicant’s evidence submitted for the first
time with the brief is sustained. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d)
(record “should be complete prior to the filing of an appeal”). See In re Midwest
Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 n.3 (TTAB 2013) (new evidence
submitted with brief is “untimely and therefore not part of the record for this case”);
see also In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018), aff’d
without decision, 777 Fed. Appx. 616 (unpublished).
To the extent any of that evidence was submitted during prosecution of the
application it has been considered based on the prosecution record.
II. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in 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 (Fed. Cir. 2003). We consider the du Pont factors for which there is
evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019)). Further, “[a]lthough confusion, mistake or deception about
source or origin is the usual issue posed under Section 2(d), any confusion made likely
by a junior user’s mark is cause for refusal; likelihood of confusion encompasses
confusion of sponsorship, affiliation or connection.” Hilson Research, Inc. v. Society
for Human Resource Mgmt., 27 USPQ2d 1423, 1429 (TTAB 1993); see also Majestic,
65 USPQ2d at 1205 (“...mistaken belief that [a good] is manufactured or sponsored
Serial No. 87603644
- 4 -
by the same entity ... is precisely the mistake that Section 2(d) of the Lanham Act
seeks to prevent”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the services. See In re Chatam Int’l
Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017)
(“The likelihood of confusion analysis considers all [du Pont] 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.,
308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)).
A. Similarity/Dissimilarity of the Marks
Applicant’s mark is identical to the mark in the cited registration in “appearance,
sound, connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691
(Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).
Applicant does not dispute that the marks are identical, but argues that the
registered mark should be accorded a narrow scope of protection based on the nine
Serial No. 87603644
- 5 -
third-party registrations it submitted.3 In re Guild Mort. Co., 2020 USPQ2d 10279,
*3 (TTAB 2020) (consideration of conceptual weakness appropriate to consider in
context of the similarities of the marks). Third-party registrations for similar marks
and similar goods or services may be relevant to “show the sense in which . . . a mark
is used in ordinary parlance.” Id. (quoting Juice Generation, Inc. v. GS Enters. LLC,
794 F.3d 1334, 115 USPQ2d 1671, 1675 (Fed. Cir. 2015)); see also Jack Wolfskin
Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797
F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015). All of the third-party
registrations Applicant submitted are for vastly different goods or services (e.g., fresh
citrus fruit, blood glucose monitors, educational services in the field of literacy and
printed materials therefor, beer, copy and written text editing, electronic gaming
machines, yoga instruction). In addition, two examples are not based on use in
commerce (Reg. No. 4468397 for wine and Reg. No. 4503697 for furniture and
wholesale store services for furniture). Cf. Calypso Tech., Inc. v. Calypso Capital
Mgmt., LP, 100 USPQ2d 1213, 1221 n.15 (TTAB 2011) (third-party registrations not
based on use have little if any probative value). Finally, the submissions are the
copies of the registrations and do not provide any information as to whether they are
currently registered. Cancelled or expired third-party registrations for similar marks
are not probative evidence of a mark’s descriptiveness, suggestiveness, or strength.
See Bond v. Taylor, 119 USPQ2d 1049, 1054 n. 10 (TTAB 2016). In short, these third-
party registrations have no probative value for determining whether the mark

3 July 29, 2019 Response, TSDR pp. 10-25.
Serial No. 87603644
- 6 -
SILVER MOON is weak for Registrant’s hotel and motel services (or for any of
Applicant’s services).
In view thereof, the similarity of the marks weighs heavily in favor of a finding of
likelihood of confusion.
B. Relatedness of the Services, Trade Channels, Classes of Consumers
We must make our determinations based on the services as they are identified in
the application and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, LP v. Lion
Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002);
Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990). Where the marks of the respective parties are identical as is the case
here, the relationship between the services need not be as close to support a finding
of likelihood of confusion as would be required if there were differences between the
marks. In re i.am.symbolic, llc, 116 USPQ2d 1406, 1411 (TTAB 2015) (citing In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1689 (Fed. Cir. 1993), aff’d, 123
USPQ2d at 1744); In re Iolo Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010).
The services do not have to be identical or even competitive in order to find that
there is a likelihood of confusion. In re Iolo Techs., LLC, 95 USPQ2d at 1499; In re
G.B.I. Tile & Stone, Inc., 92 USPQ2d 1366, 1368 (TTAB 2009). The issue is not
whether the services will be confused with each other, but rather whether the public
will be confused as to their source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54
Serial No. 87603644
- 7 -
USPQ2d 1894, 1898 (Fed. Cir. 2000) “[E]ven if the goods [or services] in question are
different from, and thus not related to, one another in kind, the same goods [or
services] can be related in the mind of the consuming public as to the origin of the
goods [or services]. It is this sense of relatedness that matters in the likelihood of
confusion analysis.”). It is sufficient that the services of the applicant and the
registrant are related in some manner or that the conditions surrounding their
marketing are such that they are likely to be encountered by the same persons under
circumstances that, because of the marks used in connection therewith, would lead
to the mistaken belief that they originate from the same source. See, e.g., Coach
Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1722 (Fed.
Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB); On-line
Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
Applicant focuses its arguments on some of the inherent differences between a
motel and a cruise ship.4 However, as explained above, the question is not whether
the services will be confused with each other. The question is whether there is likely
confusion as to source. In addition, we underscore that Registrant’s services include

4 For example, Applicant points out that “land-based motels provide accommodations for
motorists who are travelling, which allows them to park their vehicles near their rooms …
customers cannot approach Applicant’s ship and attempt to reserve a room for the night …
customers must purchase a luxury cruise through a booking agent or Applicant’s website …
Applicant provides international cruise ship services, travelling to hundreds of different
locations each year [and] [n]one of these locations are within hundreds of miles of registrant’s
location.” 7 TTABVUE 11. Applicant’s argument that Applicant’s and Registrant’s services
fall into different International Classes provides no support for Applicant’s position because
classification of goods and services has no bearing on the question of likelihood of confusion.
See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047 (Fed. Cir. 2018); Jean Patou,
Inc. v. Theon Inc., 9 F.3d 971, 975, 29 USPQ2d 1771, 1774 (Fed. Cir. 1993).
Serial No. 87603644
- 8 -
hotels and Applicant’s services include booking and touring services for land-based
activities. We cannot limit our analysis based on the evidence Applicant provided
concerning Registrant’s actual use. “We have no authority to read any restrictions or
limitations into the registrant’s description of goods.” In re Thor Tech Inc., 90
USPQ2d 1634, 1638 (TTAB 2009). Nor may an applicant restrict the scope of the
services covered in the cited registration by argument or extrinsic evidence. In re
Midwest Gaming & Entm’t LLC, 106 USPQ2d at 1165; In re La Peregrina Ltd., 86
USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763,
764 (TTAB 1986). The registration receives all presumptions under Section 7(b) of
the Trademark Act, 15 U.S.C. § 1057(b). The registration identifies “hotel and motel
services” and contains no limitations, thus, encompasses all types of hotel and motel
services.5 Therefore, the evidence submitted by the Examining Attorney, discussed
below, showing third-parties offering Registrant’s and Applicant’s types of services,
as they are broadly identified, are probative for our consideration based on the
services as identified.
The Examining Attorney argues that “Applicant’s services are related to
Registrant’s services because hotel, tour, transport, booking and cruise services are
commonly provided by the same entity and marketed under the same mark, sold or
provided through the same trade channels and used by the same classes of consumers

5 Applicant’s reliance on the geographic separation of the actual services also impermissibly
restricts the scope of the registration. Geographic restrictions may only be considered in the
context of a concurrent use proceeding. Trademark Rule 2.99, 37 C.F.R. § 2.99(h).
Serial No. 87603644
- 9 -
in the same fields of use, and bundled for complementary use.” 9 TTABVUE 8. The
record supports this assertion.
The Examining Attorney submitted several examples of third-party websites
offering various items of Applicant’s and Registrant’s services under a single mark.
A few examples are highlighted below:6
Disneytravelagents.com and Disney.go.com, showing that
Disney provides cruise ship services, booking services,
transportation, excursions and tours, and hotel services
under the same trademark;
Marriott.com and Ritzcarlton.com, showing that Ritz-
Carlton provides cruise ship services, booking services,
transportation, excursions, and hotel services under the
same trademark;
Sandals.com, showing that Sandals provides booking
services, transportation, excursions and tours, and hotel
services under the same trademark; and
Beaches.com, showing that Beaches provides cruises,
booking services, transportation, excursions and tours, and
hotel services under the same trademark.
The Examining Attorney submitted the following examples to show both that the
services are related and that they travel in the same trade channels because they are
offered as bundled services and are complementary in purpose or function:7
Ncl.com, showing that Norwegian Cruise Line provides
cruises, booking services, transportation, tours, and hotel
packages on its website;
Bahamasparadisecruise.com, showing that Bahamas
Paradise Cruise Line provides cruise and hotel packages
and excursions on its website;

6 November 8, 2017 Office Action, TSDR p. 3–45.
7 January 29, 2019 Final Action, TSDR pp. 2-17.
Serial No. 87603644
- 10 -
Royalcaribbean.com, showing that Royal Caribbean
International provides cruise and hotel packages on its
website;
Choicehotels.com, showing that Choice Hotels provides
cruise, transportation, and hotel packages on its website;
and
Celebritycruises.com, showing that Celebrity Cruises
provides cruise, transportation, and hotel packages on its
website.
We agree with the Examining Attorney that the “evidence establishes that hotel,
cruise ship, transportation, booking, and tour services are commonly provided by the
same entity and marketed under the same mark, provided through the same trade
channels and used by the same classes of consumers in the same fields of use, and
bundled because they are complementary in terms of purpose or function.” 9
TTABVUE 10.
We find Applicant’s and Registrant’s services to be related and the trade channels
and classes of consumers overlap. This favors a finding of likelihood of confusion.
C. Conditions of Sale
Applicant points to the difference in cost between a cruise and a night at
Registrant’s motel and asserts that “Applicant’s cruises are not routine, mass-
marketed cruises but are ultra-luxury cruises that are advertised at prices ranging
between $4,950 and $10,620. … Applicant’s customers are professional and
sophisticated buyers who are unlikely to confuse Applicant’s services with a small
motel in landlocked Colorado.” 7 TTABVUE 14. Again, this argument is flawed in
that it impermissibly restricts the identifications of services based on evidence of
Serial No. 87603644
- 11 -
actual use. We further note Applicant’s services include more broad-based booking
and touring services that are not limited to cruise ship services. In re Midwest
Gaming & Entm’t LLC, 106 USPQ2d at 1166 & n.4 (semicolon separates services into
discrete categories). In addition, Applicant has stated that customers do not need to
go through a professional purchaser and may book the services by themselves on the
website. In general, cruises are expensive, but so are some hotels and to at least this
extent the consumers do overlap.
We agree, based on the nature of Applicant’s identified services, more care will be
taken in the purchasing process. Nonetheless, it is settled that “even sophisticated
purchasers are not immune from source confusion, especially in cases such as the
present one involving identical marks and related goods [and/or services].” In re
i.am.symbolic, llc, 116 USPQ2d at 1413 (citing In re Research & Trading Corp., 793
F.2d1276, 1279, 230 USPQ 49, 50 (Fed. Cir. 1986)); see also In re Shell Oil Co., 26
USPQ2d at 1690.
While the conditions of sale, given the expensive nature of cruise ships and
somewhat expensive nature of travel and tour services, serve to mitigate likely
confusion, the identical marks and the relatedness of the services “outweigh any
presumed sophisticated purchasing decision.” In re i.am.symbolic, llc, 116 USPQ2d
at 1413 (citing HRL Assocs., Inc. v. Weiss Assocs., Inc., 12 USPQ2d 1819, 1823 (TTAB
1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990)).
Serial No. 87603644
- 12 -
III. Conclusion
In view of the identical marks, related services and overlap in trade channels and
classes of consumers, despite some level of care in the overlapping consumers,
confusion is likely between Applicant’s mark SILVER MOON and Registrant’s mark
SILVER MOON.
Decision: The refusal to register Applicant’s mark is affirmed.