Stephen A. Robbins

Trademark Trial and Appeal Board

Oct 23, 2006

No. 78465212 (T.T.A.B. Oct. 23, 2006)

Mailed:
October 23, 2006
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Stephen A. Robbins
________

Serial No. 78465212
_______

Thomas M. Small of Birch Stewart Kolasch & Birch, LLP for
Stephen A. Robbins.

Steven W. Jackson, Trademark Examining Attorney, Law Office
107 (J. Leslie Bishop, Managing Attorney).
_______

Before Bucher, Zervas and Cataldo, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Stephen A. Robbins seeks registration on the Principal
Register of the mark A LANDMARK WEDDING EXPERIENCE (in
standard character format) for goods and services identified
in the application, as amended, as follows:
“printed materials, namely, books, booklets, magazines,
manuals, note books, writing pads, brochures,
pamphlets, catalogues, posters, daily planners, desktop
planners, folders for papers, greeting cards,
postcards, decalcomanias, albums, charts, shopping bags
of paper or plastic, all featuring wedding planning” in
International Class 16;
“wedding planning services; special event planning,
namely, planning parties, meetings and receptions for
others concerning weddings” in International Class 41;
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Serial No. 78465212
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“hotel services; providing restaurant facilities for
special receptions” in International Class 43; and
“wedding chapel services” in International Class 45.1
This case is now before the Board on appeal from the
final refusal of the Trademark Examining Attorney to
register this mark based upon Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney
has found that applicant’s mark, when used in connection
with the identified goods and services, so resembles the
mark, THE WEDDING EXPERIENCE (in standard character format),
registered for “event planning consultation, namely, wedding
planning consultation; wedding planning consultation
services; travel agency services, namely, making
reservations and booking for temporary lodging” in
International Class 42,2 as to be likely to cause confusion,
to cause mistake or to deceive.
Applicant and the Trademark Examining Attorney have
fully briefed the issues in the case. We affirm the refusal
to register.

1 Application Serial No. 78465212 was filed on August 10, 2004
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce. Applicant makes no claim to the exclusive
right to use the word “Wedding” apart from the mark as shown.
2 Reg. No. 2688722 issued on February 18, 2003 based upon
applicant’s claim of first use anywhere and first use in commerce
at least as early as June 8, 1999. Registrant makes no claim to
the exclusive right to use the word “Wedding” apart from the mark
as shown.
Serial No. 78465212
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Although applicant concedes that its goods and services
are related to registrant’s services,3 applicant argues that
these marks are not confusingly similar, especially in light
of the weakness of registrant’s cited mark. Rather,
applicant argues that the leading term “A LANDMARK …” is the
dominant and distinctive part of the mark it seeks to
register herein.
By contrast, the Trademark Examining Attorney argues
that when the marks are compared in their entireties, they
are similar as to appearance, connotation and commercial
impression. He argues that the term “Wedding Experience” is
the dominant element of applicant’s mark, while the word
“Landmark” has “a descriptive meaning when used in
relationship to life altering events such as weddings.”
Trademark Examining Attorney’s appeal brief, unnumbered
p. 7.
Analysis: Likelihood of Confusion
Our determination under Section 2(d) is based upon an
analysis of all of the 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 (CCPA 1973). In any likelihood of

3 “ … for admittedly related goods and services all pertaining
to weddings and wedding receptions … ” Applicant’s appeal brief,
p. 2, emphasis supplied.
Serial No. 78465212
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confusion analysis, two key considerations are the
similarities between the marks and the relationship of the
services and/or goods. Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976) [“The
fundamental inquiry mandated by Section 2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods [or services] and differences
in the marks”].
The services and goods
We begin by comparing the services and goods involved
herein. The services are identical, in part. Furthermore,
applicant has conceded that there is a relationship herein
between those remaining services and goods that are not
identical. Additionally, the Trademark Examining Attorney
has provided third-party registrations showing that a
variety of goods and services connected with weddings and
wedding planning are commonly marketed under the same
service marks and/or trademarks.
YOU DREAM IT
WE WILL MAKE
YOUR DREAM
COME TRUE
for “wedding reception and planning
consultation, namely, consultation regarding
selecting and ordering invitations, wedding
gowns, tuxedos, wedding accessories and
decorations; catering services; floral
arrangements; honeymoon planning, namely,
making reservations and booking temporary
lodging; and budget planning in connection
Serial No. 78465212
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with all the aforementioned” in International
Class 42;4
ONESOURCE for inter alia “special event planning and
management, namely, arranging, organizing and
scheduling wedding[s], banquets, parties and
social events” in International Class 41; and
“hotel, restaurant, catering, bar and lounge
services; making hotel accommodation
reservations for others; and providing banquet
and social function facilities for special
occasions, namely, weddings, banquets, parties
and social events” in International Class 42;5
and,
UTAHWEDDINGS for inter alia “printed publications, namely,
books featuring information in the field of
honeymoons, preparations for marriage and
marriage celebration” in International Class
16; “online information services, namely,
providing information in the field of
honeymoon travel” in International Class 39;
and “online information services, namely,
providing information in the field of wedding
planning” in International Class 41.6

These third-party registrations, which are based on use
in commerce, and which individually cover a number of
different goods and services, provide some support for the
Trademark Examining Attorney’s position that the various
goods and services connected with weddings and wedding

4 Registration No. 2346501 issued on May 2, 2000 claiming
first use anywhere and first use in commerce at least as early as
October 25, 1997; Section 8 affidavit (six-year) accepted and
Section 15 affidavit acknowledged.
5 Registration No. 2670382 issued on December 31, 2002
claiming first use anywhere and first use in commerce in both
classes at least as early as February 28, 2002.
6 Registration No. 2849867 issued on June 1, 2004 claiming
first use anywhere in International Class 16 at least as early as
September 15, 2000 and first use in commerce in International
Class 16 at least as early as October 31, 2000, and claiming
first use anywhere and first use in commerce in International
Classes 39 and 41 at least as early as January 1, 2000.

Serial No. 78465212
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planning are related because they show that these goods and
services have been registered by the same source under the
same mark. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988) [Although third-party registrations
“are not evidence that the marks shown therein are in use on
a commercial scale or that the public is familiar with them,
[they] may have some probative value to the extent that they
may serve to suggest that such goods or services are the
type which may emanate from a single source”]. See also In
re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB
1993). Accordingly, this du Pont factor favors a finding of
likelihood of confusion.
Channels of trade and classes of purchasers
Similarly, there is nothing in the record to suggest
that the goods and services would not move in the same
channels of trade and be encountered by the same classes of
purchasers. On these two related du Pont factors -- the
similarity of established, likely-to-continue trade channels
and the conditions under which and buyers to whom sales will
be made – it would seem to follow from the relationship of
the services and goods that the same classes of ordinary
consumers would find these goods and services offered
through the same channels of trade, and hence, these two
Serial No. 78465212
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factors also favor the position of the Trademark Examining
Attorney.
The marks
The critical du Pont factor which the Trademark
Examining Attorney and applicant discuss extensively in
their briefs involves the similarities or dissimilarities in
the appearance, sound, connotation and commercial impression
of the respective marks. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,
73 USPQ2d 1689, 1692 (Fed. Cir. 2005). The Trademark
Examining Attorney argues that the words “Wedding
Experience” comprise the dominant portion of applicant’s
mark:
It is the term, “Wedding Experience,” in
relation to wedding and wedding planning
goods and services that consumers will look
to as identifying the source of the goods and
services and it is, therefore, the dominant
element of the applicant’s mark.

Trademark Examining Attorney’s appeal brief, unnumbered
p. 6. He goes on to posit that the first portion of
applicant’s four-word phrase is descriptive and hence not
able to obviate a likelihood of confusion between these
marks:
Applicant argues that LANDMARK should be
given greater weight in determining
likelihood of confusion, as it is not
Serial No. 78465212
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descriptive in relationship to weddings.
However, “landmark” does have a descriptive
meaning when used in relationship to life
altering events such as weddings.
Specifically, “landmark” is defined as “an
event marking an important stage of
development or a turning point in history.”
THE AMERICAN HERITAGE DICTIONARY OF THE ENGLISH
LANGUAGE: FOURTH EDITION (2000)[fn omitted].
The combination of “landmark” with WEDDING
EXPERIENCE merely serves to reinforce the
common impression that the wedding involves a
new stage or turning point. Truly, a wedding
is a landmark experience for the
participants. Furthermore, the applicant has
merely taken the registered mark, THE WEDDING
EXPERIENCE, and merely added the term
LANDMARK. It is a general rule that
likelihood of confusion is not avoided
between otherwise confusingly similar marks
merely by adding or deleting a house mark or
matter that is descriptive or suggestive of
the named goods or services.

Trademark Examining Attorney’s appeal brief, unnumbered pp.
7 – 8.
By contrast, applicant asserts that the respective
marks are quite different when viewed in their entireties:
“A LANDMARK” is the dominant and distinctive
part of the mark sought to be registered and
“WEDDING EXPERIENCE” is a descriptive or
generic portion that is subordinate to “A
LANDMARK.”

When “LANDMARK” is given the high degree of
prominence that it deserves, the principle
factors that the examining attorney has
stated – appearance, sound, meaning and
commercial impression – of the Applicant’s
mark, considered in its entirety, tilts the
balance in favor of a finding that the marks
in question are not confusingly similar, the
term “LANDMARK” is not a descriptive term
with regard to weddings, and its presence
Serial No. 78465212
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lends a high degree of distinctiveness to the
overall mark.

Applicant’s appeal brief, p. 4.
Inasmuch as registrant has THE WEDDING EXPERIENCE
registered on the Principal Register for a variety of
wedding planning and lodging services, applicant cannot
collaterally attack this registered mark by arguing that the
term “Wedding Experience” is generic, or even merely
descriptive. As noted by the Trademark Examining Attorney,
applicant has essentially appropriated the registered mark
in its entirety, and modified it with the word “Landmark.”
Notwithstanding any alleged weaknesses in the cited mark
when used in connection with the recited services, even weak
marks are entitled to protection against registration by a
subsequent user of the same or a substantially similar mark
for the same or closely-related goods or services. See
Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439
(TTAB 1976) [Likelihood of confusion between IDENT-A-PET for
tattooing of pets for identification and IDENT-A-BAND for
cards inserted into bands bearing identification].
Moreover, while the word “Landmark” comes earlier in
the phrase than the words “Wedding Experience,” as shown by
the dictionary entries placed into the record by the
Trademark Examining Attorney, the word “Landmark” does have
Serial No. 78465212
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a meaning in connection with these goods and services making
it lauditorily suggestive, if not descriptive. It clearly
modifies the term “Wedding Experience,” indicating the kind
of wedding being promised. In the context of this phrase,
it is not clear that the word “Landmark” would be perceived
as a separate source indicator, independent of the words
“Wedding Experience.” Rather, it would seem to be lauding
the quality of the type of wedding event that applicant will
be proffering. Applicant has failed to put forward a
convincing case for why the modifying word “Landmark,” in
the context of this composite phrase, should be considered
to be an inherently distinctive component of its mark.
Accordingly, we find that applicant’s mark has a
similar connotation and commercial impression to
registrant’s cited mark. This du Pont factor too favors the
position of the Trademark Examining Attorney.
Conclusion
Inasmuch as these two marks are quite similar as to
connotation and commercial impression, and because, in
addition to use with identical services, applicant’s mark is
to be used in connection with goods and services that are
deemed to be otherwise related to registrant’s extant
services, we find a likelihood of confusion herein.
Serial No. 78465212
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Finally, to the extent that the issue of likelihood of
confusion is close, we are obligated to resolve any such
doubts in favor of the registrant and prior user. In re
Hyper Shoppes, 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
1988).
Decision: The Trademark Examining Attorney’s refusal
to register applicant’s mark A LANDMARK WEDDING
EXPERIENCE for a variety of goods and services connected
with weddings and wedding planning under Section 2(d) of the
Lanham Act is affirmed as to all four classes of goods and
services remaining in this application.