Walden Retreats

Trademark Trial and Appeal Board

Sep 30, 2021

88690801 (T.T.A.B. Sep. 30, 2021)

This Opinion is not a
Precedent of the TTAB

Mailed: September 30, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Walden Retreats
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Serial Nos. 88690796 and 88690801
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David W. Carstens of Carstens & Cahoon, LLP,
for Walden Retreats.
Michael J. Souders, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
_____

Before Kuhlke, Taylor and Larkin,
Administrative Trademark Judges.

Opinion by Taylor, Administrative Trademark Judge:
Walden Retreats (“Applicant”) seeks registration on the Principal Register of the
standard character mark WALDEN RETREATS (RETREATS disclaimed) for “hotel
accommodation services; hotel services” in International Class 43,1 and the composite
word-and-design mark shown below

1 Application Serial No. 88690801 was filed on November 13, 2019, under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use of the mark
anywhere on November 1, 2016 and use in commerce since at least as early as April 1, 2018.
Serial Nos. 88690796 and 88690801
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for “Hotel services” in International Class 43.2 The word RETREATS has been
disclaimed. The application also includes the following description: “The mark
consists of the wording ‘WALDEN RETREATS’ appearing to the right of a design of
a vintage lantern. The word ‘WALDEN’ appears above the word ‘RETREATS’ and is
in larger letters.” Color is not claimed as a feature of the mark.
The Examining Attorney has refused registration of both marks under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion
with the Principal Register mark in U.S. Registration No. 5963340, WALDEN (in
standard characters), for:
Special event planning for business purposes; special event
planning for commercial, promotional or advertising
purposes; event planning and management for marketing,
branding, promoting or advertising the goods and services
of others, in International Class 35;
Special event planning for social entertainment purposes;
consultation in the field of special event planning for social
entertainment purposes, in International Class 41;
Catering services; bar services; rental and provision of
event space; providing banquet and social function
facilities for special occasions; providing social meeting,
banquet and social function facilities; rental of banquet and
social function facilities for special occasions, namely,
wedding, birthday parties, engagement parties, mitzvahs,
galas, fundraisers, tradeshows, conferences, photo shoots,

2 Application Serial No. 88690801 was filed on November 13, 2019, under Trademark Act
Section 1(a), 15 U.S.C. § 1051(a), based upon Applicant’s claim of first use of the mark
anywhere on November 1, 2016 and use in commerce since at least as early as January 1,
2018.
Serial Nos. 88690796 and 88690801
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filming, showers, corporate outings, and product launches,
in International Class 43.3
When the Examining Attorney made the refusals final, Applicant appealed in each
case and requested reconsideration, which was denied. Applicant and the Examining
Attorney filed briefs in each case. We affirm the refusals to register.
I. Appeals Consolidated
Because the issues presented in both appeals are essentially the same, and the
arguments and evidence advanced by Applicant and the Examining Attorney are very
similar in each case, we hereby sua sponte consolidate the two appeals and will decide
them in a single opinion. See In re Binion, 93 USPQ2d 1531, 1533 (TTAB 2009);
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1214 (2020).
Unless otherwise stated, all references to the briefs and evidentiary record are to
application Serial No. 88690796.4
II. Likelihood of Confusion – Analysis
A. The Services, Channels of Trade and Classes of Consumers
We first consider the DuPont factors involving the similarity of the services and
channels of trade. In making our determination regarding the similarity of the
services, we must look to the services as identified in the application and the cited
registration. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317,

3 Registration No. 5963340 issued on January 14, 2020.
4 Page references herein to the application record are to the downloadable .pdf version of the
USPTO’s Trademark Status & Document Retrieval (TSDR) system. References to the briefs
and orders on appeal are to the Board’s TTABVUE docket system. Where applicable,
complete urls can be found at the TSDR cite.
Serial Nos. 88690796 and 88690801
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110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Hous. Comput.
Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990); In re Giovanni
Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011).
It is settled that it is not necessary that the respective services be identical or even
competitive in order to find that they are related for purposes of our likelihood of
confusion analysis. Confusion may occur if the respective services are “related in some
manner and/or if the circumstances surrounding their marketing [be] such that they
could give rise to the mistaken belief that [the services] emanate from the same
source.” 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 2007)); see also In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289, 1290 (Fed. Cir. 1984); In re Melville Corp., 18 USPQ2d 1386, 1388 (TTAB
1991).
As noted above, Applicant’s identified services include “hotel services” and “hotel
accommodation services”5 and Registrant’s identified services include: special event
planning for business (Class 35) and social entertainment (Class 41) purposes;
catering services; bar services; provision of event space, providing banquet and social
function facilities (Class 43).6
The Examining Attorney contends that “[w]hile the services of the parties are not
identical, the evidence of record demonstrates that the services are highly related as

5 Only application Serial No. 88690801 additionally includes “hotel accommodation services.”
6 The cited registration includes additional services. We focus on those discussed by the
Examining Attorney and Applicant during prosecution and briefing.
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they frequently emanate from the same source.”7 As support, he has made of record
use-based, third-party registrations showing registration of the same mark by a
single entity for “hotel services” and one or more of the services of the types recited
in the cited registration. Third-party registrations that cover services from both
Applicant’s application and the cited registration are relevant to show that the
services are of a type that may emanate from a single source under one mark. See,
e.g., In re Detroit Athletic, 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018);
Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002); In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001);
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky
Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988).
We focus on the evidence highlighted in the Examining Attorney’s brief which
includes, by way of example, the following registrations: Registration No. 5664038 for
the mark THE PINK PALACE for “hotel services” and “bar and cocktail lounge
services; providing banquet and social function facilities for special occasions; and
catering services”8; Registration No. 5710959 for the mark DIAMOND RESORTS for
“hotel services”9 and “restaurant, catering, bar and cocktail lounge services; resort
lodging services; provision of general-purpose facilities for meetings, conferences and
exhibitions”; Registration No. 5938910 for the mark HOTEL BENNETT and design

7 12 TTABVUE
8 February 18, 2020 Office Action, TSDR 13-15.
9 Id. at TSDR 19-21.
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for “hotel services” and “resort lodging services; provision of general purpose facilities
for meetings, conferences and exhibitions; provision of banquet and social function
facilities for special occasions; and reservation service for hotel accommodations for
others”10; and Registration No. 5674303 for the mark MEBANE MANOR and design
for “hotel services” and “provision of conference facilities.”11
The Examining Attorney also made of record printouts from various websites
establishing that hotel accommodation services and the provision of event space,
banquet and social function facilities, and event planning services are offered
together and emanate from the same source. The following examples are highlighted
in the Examining Attorney’s brief:
 The Hotel at the University of Maryland provides accommodations and “has
been specifically designed to accommodate a variety of conferences and
meetings – for groups of 10 to 1500 in College Park, MD.”12
 The Washington Hilton provides hotel accommodations as well as facilities
for “conferences and conventions” and “special events.”13
 The Crossroads Hotel in Kansas City provides accommodations as well as
event spaces.14
 The Marriott hotels asks consumers to determine the type of hotel that best
suit their meeting or event needs (an airport hotel, convention and meeting
hotel, resort, conference center or all-suite hotel).15

10 Id. at TSDR 28-30.
11 Id. at TSDR 31-33.
12 Id. at TSDR 39-48 (www.thehotelumd.com).
13 Id. at TSDR 61-67 (www.hilton.com).
14 September 8, 2020 Office Action, TSDR 40-51 (https://crossroadshotelkc.com).
15 April 5, 2021 Office Action, TSDR 5-8 (https://www.marriott.com/meeting-event-
hotels/event-planning-guide.mi).
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 “Whether you’re looking for a city-center hotel, an activity-rich resort or a
spacious convention property, Omni Hotels & Resorts can meet your even
planning needs with our large portfolio of meeting venue options.”16

 “The Seaport Hotel in Boston is your solutions driven partner in creating
impressive events. We offer more than 27,000 square feet of indoor and
outdoor space, catering, audiovisual gear, and group accommodations so
planning your Boston even is seamless and stress free.”17

The third-party registration and use evidence convinces us that consumers may
expect to find hotel services, and one or more of the identified special event planning
for business and social entertainment purposes, catering, bar, provision of event
space, and provision of banquet and social function facilities services to be offered
together by the same entity under the same mark. We further find the third-party
use evidence demonstrates that the respective above-listed services are
complementary and commercially related for likelihood of confusion purposes in that
they may be offered and used together to facilitate a social or corporate function or
event at a hotel. This finding is confirmed in an article in USA TODAY (online)
(https://travel tips.usatoday.com) titled “How to Plan a Corporate Event at a Hotel,”
and advising one to “[c]ontact the hotel of choice and speak with the event planner of
the hotel’s corporate sales department.”18 A screen capture from the Holiday Inn hotel
website (https://www.ihg.com/holidayinn) states that “… whether you’re a first-timer
or an experienced organizer, we make it easy to plan and book your meeting space so

16 Id. at TSDR 34-35, (https://www.omnihotels.com/meetings/event-services).
17 Id. at TSDR 47-60 (https://www.seaportboston.com/meeting-events/event-planning).
18 Id. at TSDR 29-31.
Serial Nos. 88690796 and 88690801
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you can focus on creating moments that matter.”19 Where evidence shows that the
services at issue have complementary objectives, and thus are often offered and used
together or otherwise purchased by the same purchasers for the same or related
purposes, such services have generally been found to be sufficiently related such that
confusion would be likely if they are marketed under the same or similar marks. Cf.
In re Martin’s Famous Pastry Shoppe, 223 USPQ at 1290 (holding bread and cheese
to be related because they are often used in combination and noting that “[s]uch
complementary use has long been recognized as a relevant consideration in
determining a likelihood of confusion”).
We are not persuaded by Applicant’s argument to the contrary. Applicant, citing
the definitions of “hotel” and “accommodation,” and “lodging” and “event planning,”
contends that the scope of Applicant’s recited services has “distinctive and notable”
differences from those listed in the cited mark. Applicant argues that even though
the respective services are offered “under the same roof,” the services are unrelated
because, as defined, they only have a “tangential crossover.” Applicant’s brief, pp. 7-
8.20 We reiterate, however, that the respective services need not be identical or even
competitive in order to find that they are related for purposes of our likelihood of
confusion analysis. Coach Servs., 101 USPQ2d at 1722. As just explained, we find
their marketing by the same entity under the same mark may give rise to a mistaken

19 Id. at TSDR 37-38.
20 10 TTABVUE 8-9.
Serial Nos. 88690796 and 88690801
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belief that the respective services originate from a common source when they are
offered under the same or similar marks.
We accordingly find Applicant’s identified hotel and hotel accommodation services
to be related and complementary to Registrant’s recited special event planning for
business and social entertainment purposes, catering, bar, provision of event space,
and provision of banquet and social function facilities services.
Furthermore, because there are no limitations or restrictions as to trade channels
or classes of purchasers in the respective identifications of services, we presume that
the services are marketed in all normal trade channels for such services and to all
normal classes of purchasers of such services. See Packard Press Inc. v. Hewlett-
Packard Co., 227 F.3d 1352, 1358, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000). The trade
channels for both Applicant’s and Registrant’s services, as demonstrated by the
evidence of record, would include online reservation agents and event planners, as
well as those located in brick-and-mortar hotels that feature, e.g., rooms, event spaces
and catering. The relevant class of consumers for both types of identified services
includes ordinary consumers seeking hotel accommodations coupled with event
planning and event spaces. Accordingly, the trade channels and classes of consumers
for the services at issue overlap.
The DuPont factors concerning the relatedness of the services, channels of trade
and classes of consumers weigh in favor of finding that confusion is likely.
Serial Nos. 88690796 and 88690801
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B. The Marks
We next consider the similarity or dissimilarity of the marks in their entireties as
to appearance, sound, connotation and commercial impression. Stone Lion, 110
USPQ2d at 1160; DuPont, 177 USPQ at 567. We do not predicate our analysis on a
dissection of the involved marks; we consider the marks in their entireties. Stone
Lion, 110 USPQ2d at 1160; Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005,
212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). However, there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of the
mark, provided the ultimate conclusion rests on a consideration of the marks in their
entireties. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
The issue is not whether the marks can be distinguished when subjected to a side-by-
side comparison, but rather whether the marks are sufficiently similar in terms of
their overall commercial impression that confusion as to the source of the goods
offered under the respective marks is likely to result. Coach Servs., 101 USPQ2d at
1721 (citation omitted). See also San Fernando Elec. Mfg. Co. v. JFD Elecs.
Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977). The proper focus is on
the recollection of the average customer, who retains a general rather than specific
impression of the marks. L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB
2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB
1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The
Serial Nos. 88690796 and 88690801
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average customer in this case are consumers of hotel, event planning, event space
and catering services.
We compare Applicant’s mark WALDEN RETREATS, in standard characters, and
its composite word-and-design mark, , with the cited standard
character mark, WALDEN. The word WALDEN is the dominant portion of both of
Applicant’s marks and the only element in the cited mark.
As regards Applicant’s standard character mark, the word RETREATS has little
to no source-indicating significance because it is descriptive and has been
disclaimed.21 As such, this word is entitled to less weight in our determination of
similarity. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944 (Fed. Cir.
2004) (descriptive terms are properly given less weight). Also, the word WALDEN is
the first portion of the mark and, as such, is most likely “to be impressed upon the
mind of the purchaser and remembered.” Presto Prods., Inc. v. Nice-Pak Prods., Inc.,
9 USPQ2d 1895, 1897 (TTAB 1988) (“[I]t is often the first part of a mark which is
most likely to be impressed upon the mind of a purchaser and remembered.”). See
also Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin, 73 USPQ2d at 1692 (“Veuve”
is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the
first word in the mark and the first word to appear on the label); Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.

21 By its disclaimer of the term, Applicant concedes that the word “Retreats” is at least merely
descriptive of the identified services. See In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012,
2014 n.4 (TTAB 1988).
Serial Nos. 88690796 and 88690801
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1992) (upon encountering the marks, consumers will first notice the identical lead
term).
We find unpersuasive, for the reason discussed above, Applicant’s contention that
the presence of the word RETREATS “invokes a unique commercial impression that
is distinctly different from the commercial impression of the Cited Mark.” Applicant’s
Brief p. 6.22
With respect to Applicant’s composite word and design mark,
here, too, the word RETREATS has little to no source-identifying significance; being
both descriptive, visually much smaller than the other elements in the mark, and the
second word in the mark when it is viewed from top to bottom. As to the vintage
lantern design, contrary to Applicant’s contention, we do not find that it dominates
the mark. When viewing the mark from left to right, it is arguably the first element
in the mark and clearly noticeable. However, it is of commensurate size with the
WALDEN word portion. And, where both words and a design comprise a mark, the
words are normally accorded greater weight because they are more likely to make an
impression upon purchasers, would be remembered by them, and would be used by
them to call for or discuss the services. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d
1905, 1912 (Fed. Cir. 2012) (citing CBS, Inc. v. Morrow, 708 F.2d 1579, 218 USPQ
198, 200 (Fed. Cir. 1983) (“in a composite mark comprising a design and words, the
verbal portion of the mark is the one most likely to indicate the origin of the goods to

22 10 TTABVUE 7.
Serial Nos. 88690796 and 88690801
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which it is affixed”)). It is commonplace for hotels to be discussed by patrons who have
stayed in them, or by reviewers, and any such discussions would necessarily utilize
the words in the mark rather than a description of the vintage lantern design because
a “design is viewed, not spoken.” In re Electrolyte Labs., Inc., 913 F.2d 930, 16
USPQ2d 1239, 1240 (Fed. Cir. 1990). While the lantern design adds to the overall
commercial impression, it merely reinforces the feel of a vintage retreat or hotel
harkening its guests.
Comparing the marks in their entireties, we find that all three are similar in
appearance and sound in that they include, or are wholly comprised of, the word
WALDEN. Regarding connotation, on this record the word WALDEN appears to be
arbitrary with respect to both the hotel and hotel accommodation services covered by
Applicant’s mark and the identified special event planning for business and social
entertainment purposes, catering, bar, provision of event space, provision of banquet
and social function facilities services in Registrant’s mark. Therefore, despite
Applicant’s contention to the contrary, we find no difference in the connotations and
commercial impressions between the marks.
While as Applicant points out, there are differences between the marks when
viewed on a side-by-side basis, that is not the proper means of comparison, and we
find that in their entireties, they are more similar than dissimilar due to the shared
word WALDEN. Indeed, it is not unlikely that consumers of both Applicant’s and
Registrant’s services may well believe that the marks are simply variants of one
Serial Nos. 88690796 and 88690801
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another, used by a single entity to identify and distinguish complementary and
related services. In re Great Lakes Canning, Inc., 227 USPQ 483, 485 (TTAB 1985).
The DuPont factor of the similarity of the marks thus favors a finding of likelihood
of confusion.
C. Actual Confusion
Applicant’s reliance on the absence of actual confusion since Registrant began
using its mark is misplaced because there is no evidence regarding the extent of
Applicant’s use of its mark, or the extent of Registrant’s use of the cited mark.
Therefore, we cannot gauge whether, or the extent to which there has been an
opportunity for confusion to occur if it were likely to occur. See Nina Ricci S.A.R.L. v.
E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903 (Fed. Cir. 1989) (“The
absence of any showing of actual confusion is of very little, if any, probative value
here because (1) no evidence was presented as to the extent of ETF’s use of the
VITTORIO RICCI mark on the merchandise in question in prior years ….”); In re
Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any event, a lack of
evidence of actual confusion carries little weight in an ex parte case such as this.
Majestic Distilling, 65 USPQ2d at 1205, because “it is unnecessary to show actual
confusion in establishing likelihood of confusion.” Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). This factor is
neutral.
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D. Additional Argument
In making its argument regarding the lack of actual confusion, Applicant alleges
that it is the senior user with a “priority date” that predates the cited registration.
Applicant’s Brief, p. 10.23 Applicant’s allegation of prior use is irrelevant to the
outcome of this ex parte proceeding, and is considered an impermissible collateral
attack on the registration. In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531,
1534-35 (Fed. Cir. 1997). Trademark Act Section 7(b), 15 U.S.C. §1057(b), provides
that a certificate of registration on the Principal Register is 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 mark in commerce on or in connection with the
services specified in the certificate.
E. Conclusion
We find that confusion is likely between Applicant’s standard character mark
WALDEN RETREATS for hotel and hotel accommodation services, and the composite
word and design mark for hotel services, and the cited standard
character mark WALDEN for the identified special event planning for business and
social entertainment purposes, catering, bar, provision of event space, provision of
banquet and social function facilities services. We conclude so principally due to the
similarity of the marks, the related and complementary nature of the services and
the overlapping trade channels.

23 10 TTABVUE 11.
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Decision: The refusals to register Applicant’s marks WALDEN RETREATS
(Serial No. 88690801) and (Serial No. 88690796) under Section 2(d)
of the Act are affirmed.