Adrenalin Attractions, LLC

This Opinion is Not a
Precedent of the TTAB

Mailed: March 19, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Adrenalin Attractions, LLC
_____

Serial No. 87419581
_____

Rob L. Phillips of FisherBroyles, LLP,
for Adrenalin Attractions, LLC.

Hanno Rittner, Trademark Examining Attorney, Law Office 119,
Brett J. Golden, Managing Attorney.

_____

Before Bergsman, Shaw, and Larkin,
Administrative Trademark Judges.

Opinion by Larkin, Administrative Trademark Judge:

Adrenalin Attractions, LLC (“Applicant”) seeks registration on the Principal

Register of the standard character mark MYSTIC MOTEL (MOTEL disclaimed) for

“resort hotel services,” in International Class 43.1

1 Application Serial No. 87419581 was filed on April 21, 2017 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intention
to use the mark in commerce.
Serial No. 87419581

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 so resembles the registered mark shown below

for various services, including “hotel services,” in International Class 42,2 as to be

likely, when used in connection with the services identified in Applicant’s application,

to cause confusion, to cause mistake, or to deceive.

Applicant appealed after the Examining Attorney made the refusal final. The case

is fully briefed. We affirm the refusal to register.

I. Evidentiary Matters

Before proceeding to the merits of the refusal, we address two evidentiary matters.

Applicant attached exhibits to its main brief consisting of what it describes as

webpages pertaining to a Mystic Hotel in San Francisco, California, a Mystic Dunes

Resort & Golf Club in Celebration, Florida, Registrant’s Mystic Lake Casino Hotel in

Minnesota, and a page from Google Maps regarding the area where Registrant’s hotel

2Registration No. 2799696 issued on December 30, 2003 and was last renewed on December
20, 2013. The registrant is the Shakopee Mdewakanton Sioux Community (“Registrant”),
which is described in the registration as a federally recognized Indian tribe. July 12, 2017
Office Action at 2. The registration covers services in Classes 35, 39, 41, and 42, but the
refusal to register is based solely on the Class 42 hotel services. 6 TTABVUE 2.

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Serial No. 87419581

is located. 4 TTABVUE 7-8, 10-16.3 Applicant also listed nine registrations in its main

brief that it claims are owned by Registrant as part of “a family of Mystic

trademarks.” Id. at 8.

The Examining Attorney objects in his brief to the attachments and the list of

registrations on the ground that they are untimely, and to the list of registrations on

the additional ground that merely listing registrations does not make them of record.

6 TTABVUE 3-4. He requests that the Board disregard all of this putative evidence.

Id. at 4.

In its reply brief, Applicant does not address the list of registrations, but argues

that it referred to the websites of the California hotel and the Florida resort and golf

club during prosecution, and that “such references were part of the record and should

be considered.” 7 TTABVUE 2.

As a general matter, the record in an application should be complete prior to the

filing of an appeal. 37 C.F.R. § 2.142(d). With respect to the webpages, Applicant

provided links to the websites of the California hotel and the Florida resort and golf

club during prosecution, which did not make information or pages from the websites

of record.4 In re Olin Corp., 124 USPQ2d 1327, 1332 n.15 (TTAB 2017). The

Examining Attorney, however, did not advise Applicant that providing links alone

was insufficient, but instead expressly acknowledged in the Final Office Action that

3These webpages are identified in the body of Applicant’s main brief as Exhibits A-D. 4
TTABVUE 7-8. There is no attachment labelled Exhibit A, but Exhibits B and C, id. at 14-
15, appear to correspond to what is described in the brief as Exhibits A and B.
4 March 1 Petition to Revive Abandoned Application at 7.

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Serial No. 87419581

Applicant had “provided allegations of evidence of competing hotels, like that of the

evidence attached, which show in the marketplace that ‘Mystic’ hotels are relatively

common.”5 If the Examining Attorney had advised Applicant in the Final Office

Action that the links were insufficient to make the webpages of record, Applicant

could have cured that deficiency on a request for reconsideration. Under the

circumstances, we deem the Examining Attorney to have waived any objection to the

websites of the California hotel and the Florida resort and golf club attached to

Applicant’s main brief. Cf. In re Mueller Sports Med., Inc., 126 USPQ2d 1584, 1587

(TTAB 2018) (“Examining Attorneys have a responsibility to make sure that

applicants properly submit Internet evidence . . . [T]he examining attorney must

object to the evidence in the first Office Action following the response and advise the

applicant as to the proper way to make the Internet evidence of record. Otherwise the

Board may consider the objection to have been waived.”). We overrule the Examining

Attorney’s objections to these two webpages, and will consider them for whatever

probative value they may have.

The webpages from Registrant’s website and from Google Maps are a different

matter. They were neither submitted nor mentioned by Applicant during prosecution,

and they are untimely when submitted for the first time on appeal. In re Fiat Grp.

Mkgt. & Corporate Commc’ns S.p.A., 109 USPQ2d 1593, 1596 (TTAB 2014). We

sustain the Examining Attorney’s objection to these webpages.

5April 4, 2018 Final Office Action at 1. The Examining Attorney himself made of record third-
party hotel webpages, id.at 41-59, including different versions of the webpages of the
California hotel. Id. at 41-44. We discuss these webpages below.

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Serial No. 87419581

The same general principles of untimeliness and failure to make evidence properly

of record apply to the list of registrations,6 but the analysis of the Examining

Attorney’s objection to the list is complicated by the fact that some of these

registrations were brought to the Examining Attorney’s attention through the

granting of a letter of protest. After the Examining Attorney conducted a search of

the records of the Patent and Trademark Office and found no conflicting marks that

would bar registration under Section 2(d),7 the Office of the Deputy Commissioner for

Trademark Examination Policy forwarded a Letter of Protest Memorandum to the

Examining Attorney.8 The Memorandum advised the Examining Attorney that a

letter of protest had been granted, and directed him to “consider the following and

make an independent determination whether to issue a requirement or refusal based

on the objections raised in the letter of protest,”9 specifically, “[p]ossible likelihood of

confusion with the registered marks identified by the protestor,” which were

identified as Registration Nos. 2799696, 2726584, 4878819, 2699711, 2760867,

2998124, and 2111108.10 The registrations identified in the Memorandum included

the cited registration on this appeal and four of the registrations listed in Applicant’s

main brief. 6 TTABVUE 8.

6 Merely listing registrations does not make them of record, see, e.g., In re Compania de
Licores Internacionales S.A., 102 USPQ2d 1841, 1843 (TTAB 2012), and Applicant did not
refer to any of the registrations during prosecution.
7 June 7, 2017 Examiner’s Amendment at 1.
8 July 11, 2017 Letter of Protest Memorandum.
9 Id. at 1.
10 Id. at 1.

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Serial No. 87419581

The Memorandum attached “evidence in the nature of screenshots from an online

dictionary,” which were definitions of the words “hotel,” “resort,” and “resort hotel,”11

and stated that “[c]opies of the listed registrations are available in the x-search

database.”12 Under Section 1715.02(b) of the TRADEMARK MANUAL OF EXAMINING

PROCEDURE (“TMEP”) (Oct. 2018), which provides that the “prosecution history of an

application will reflect the acceptance of a letter of protest and a memorandum

accepting the letter of protest and all relevant evidence will be added to the electronic

file record,” the dictionary definitions were automatically made of record via the

Memorandum. See also In re Urbano, 51 USPQ2d 1776, 1778 n.5. (TTAB 1999).

The Examining Attorney subsequently issued a first Office Action refusing

registration under Section 2(d) on the basis of Registration No. 2799696 only, which

was the first of the registrations listed in the Memorandum.13 We will consider

information regarding the four other registrations that were listed in both the

Memorandum and in Applicant’s main brief for whatever probative value it may have

because the Examining Attorney was required to consider the other four registrations

as well as the cited registration. We sustain the Examining Attorney’s objections to

the list of registrations except as to the four registrations listed in both the

Memorandum and Applicant’s main brief. Cf. In re City of Houston, 101 USPQ2d

1534, 1536 (TTAB 2009).

11 July 11, 2017 Letter of Protest Memorandum at 1-10.
12 Id. at 1.
13 July 12, 2017 Office Action at 1.

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Serial No. 87419581

II. Record on Appeal

In addition to the dictionary definitions and the information regarding the four

registrations noted above, the record on appeal consists of the following evidence

made of record by the Examining Attorney:

1. A Wikipedia entry, articles, and social media pages regarding a Mystic

Motel “haunted maze” and “dark theme park ride” developed by Scott

D’Avanzo, who is identified in the involved application as Applicant’s Chief

Executive Officer, in his family’s garage in southern California;14

2. Mr. D’Avanzo’s Registration No. 4579186 of the mark MYSTIC MOTEL in

standard characters for “entertainment services in the nature of an

amusement park attraction;”15

3. Applicant’s pending Application Serial No. 87673993 to register MYSTIC

MOTEL STAY AND SCARE and design for “motel services;”16

4. Pages from the websites at mysticlake.com and expedia.com regarding the

Mystic Lake Casino Hotel operated by Registrant in Prior Lake,

Minnesota;17

14April 4, 2018 Final Office Action at 2-11, 16-23. The Wikipedia entry states that the name
“Mystic Motel” and the theme of the ride were derived from a motel along US Route 66 that
was built in 1955. Id. at 3.
15 Id. at 12-13.
16 Id. at 14-15.
17 Id. at 24-40.

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Serial No. 87419581

5. Pages from the websites at mystichotel.com and tripadvisor.com regarding

the Mystic Hotel in San Francisco, California;18 and

6. Pages from the websites at hilton.com and tripadvisor.com regarding a

Hilton Mystic Hotel in Mystic, Connecticut and other hotels in that city.19

III. Analysis of Likelihood of Confusion Refusal

Section 2(d) of the Trademark Act prohibits registration of a mark that so

resembles a registered mark as to be likely, when used on or in connection with the

goods or services of the applicant, to cause confusion, mistake, or deception. 15 U.S.C.

§ 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on

an analysis of all probative facts in the record that are relevant to the likelihood of

confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563, 567 (CCPA 1973). We must consider each du Pont factor for which there

is evidence and argument. See, e.g., In re Guild Mtg. Co., 912 F.3d 1376, 129 USPQ2d

1160, 1162-63 (Fed. Cir. 2019); compare In re i.am.symbolic, LLC, 866 F.3d 1315, 123

USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers

all DuPont 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)). Two key factors in every Section 2(d) case are the first and second du Pont

factors, the similarity or dissimilarity of the marks and the similarity or dissimilarity

18 April 4, 2018 Final Office Action at 41-52.
19 Id. at 53-59.

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Serial No. 87419581

of goods or services, respectively, because the “fundamental inquiry mandated by §

2(d) goes to the cumulative effect of differences in the essential characteristics of the

goods [or services] and differences in the marks.” Federated Foods, Inc. v. Fort

Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).

Applicant argues that the relevant du Pont factors in this case are the first factor,

the fourth factor regarding the conditions under which consumers encounter the

marks, the sixth factor regarding the number and nature of similar marks in use, and

the twelfth factor regarding the extent of the potential for confusion. 4 TTABVUE 5-

6. The Examining Attorney argues that the most relevant factors are the first and

second factors, and the third factor regarding the similarity or dissimilarity of the

channels of trade. 6 TTABVUE 5. We will begin with the second and third factors,

which Applicant does not address in its briefs.

A. Similarity or Dissimilarity of the Services and Channels of Trade

The second du Pont factor “considers ‘[t]he similarity or dissimilarity and nature

of the goods or services as described in an application or registration,’” In re Detroit

Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1051 (Fed. Cir. 2018) (quoting du

Pont, 177 USPQ at 567), while the third du Pont factor “considers ‘[t]he similarity or

dissimilarity of established, likely-to-continue trade channels.” Id. at 1052 (quoting

du Pont, 177 USPQ at 567). Our analysis under these factors is based on the

identifications of services in the application and the cited registration. Id.; Stone Lion

Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161-

63 (Fed. Cir. 2014).

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Serial No. 87419581

The services identified in the application are “resort hotel services.” The services

in the cited registration include “hotel services.” Where services are broadly identified

in an application or registration, “we must presume that the services encompass all

services of the type identified.” Sw. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007,

1025 (TTAB 2015); see also In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134,

1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’

necessarily encompasses Registrant’s narrowly identified ‘residential and

commercial furniture.’”); Venture Out Props. LLC v. Wynn Resorts Holdings, LLC, 81

USPQ2d 1887, 1893 (TTAB 2007). The “hotel services” broadly identified in the cited

registration are thus presumed to encompass Applicant’s more narrowly identified

“resort hotel services,”20 and the services are deemed to be legally identical. See Sw.

Mgmt., 115 USPQ2d at 1025 (“restaurant services” in application encompassed all

types of restaurants, including those of concurrent use defendants); In re Binion, 93

USPQ2d 1531, 1535 (TTAB 2009) (“restaurant services” included all types of

restaurants, including restaurants located within a hotel or casino). The second du

Pont factor supports a finding of a likelihood of confusion.

With respect to the third du Pont factor, “[b]ecause the services described in the

application and the cited registration are identical, we presume that the channels of

trade and classes of purchasers are the same.” In re Inn at St. John’s, LLC, 126

USPQ2d 1742, 1745 (TTAB 2018) (citing In re Viterra, Inc., 671 F.3d 1358, 101

20Registrant describes its hotel on its website as “the premier resort destination in
Minnesota.” April 4, 2018 Final Office Action at 27.

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Serial No. 87419581

USPQ2d 1905, 1908 (Fed. Cir. 2012)). The third du Pont factor also supports a finding

of a likelihood of confusion.

B. The Similarity or Dissimilarity of the Marks

The first du Pont factor is “‘the similarity or dissimilarity of the marks in their

entireties as to appearance, sound, connotation and commercial impression.’” Palm

Bay Imps. Inc. v. Veuve Cliquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369,

73 USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567).

“Similarity in any one of these elements may be sufficient to find the marks

confusingly similar.” In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re

White Swan Ltd., 8 USPQ2d 1534, 1535 (TTAB 1988)). “The proper test is not a side-

by-side comparison of the marks, but instead whether the marks are sufficiently

similar in terms of their commercial impression such that persons who encounter the

marks would be likely to assume a connection between the parties.” Coach Servs. Inc.

v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012)

(quotation omitted). “The proper perspective on which the analysis must focus is on

the recollection of the average customer, who retains a general rather than specific

impression of marks.” In re i.am.symbolic, 127 USPQ2d 1627, 1630 (TTAB 2018)

(citations omitted).21

21 Applicant and the Examining Attorney do not specifically identify the “average customer”
of hotel services, including resort hotel services. The record shows that hotel services are
offered at various price points to consumers seeking temporary lodging for business or
pleasure. April 4, 2018 Final Office Action at 39-59. We find that hotel services, including
resort hotel services, are used by members of the general public.

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Serial No. 87419581

“‘[S]imilarity is not a binary factor but is a matter of degree.’” In re St. Helena

Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085 (Fed. Cir. 2014) (quoting In re Coors

Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1062 (Fed. Cir. 2003)). Where, as here,

the involved goods or services are identical, “the degree of similarity between the

marks necessary to support a determination that confusion is likely declines.”

i.am.symbolic, 127 USPQ2d at 1630 (citing Bridgestone Ams. Tire Operations, LLC v.

Fed. Corp., 673 F.3d. 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); Viterra, 101

USPQ2d at 1908; In re Mighty Leaf Tea, 601 F.3d 1342, 94 USPQ2d 1257, 1260 (Fed.

Cir. 2010); and Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23

USPQ2d 1698, 1701 (Fed. Cir. 1992)).

Applicant’s mark is MYSTIC MOTEL in standard characters, while Registrant’s

mark consists of the word MYSTIC in the stylized lettering displayed below:

The word MYSTIC in Registrant’s mark is entirely subsumed within Applicant’s

mark MYSTIC MOTEL, and “[l]ikelihood of confusion often has been found where the

entirety of one mark is incorporated within another.” Hunter Indus., Inc. v. Toro Co.,

110 USPQ2d 1651, 1660 (TTAB 2015) (finding PRECISION and PRECISION

DISTRIBUTION CONTROL to be confusingly similar). See also Stone Lion, 110

USPQ2d at 1160-61; TMEP Section 1207.01(b)(iii) (collecting such cases).

The marks must be considered in their entireties, but “‘in articulating reasons for

reaching a conclusion on the issue of confusion, there is nothing improper in stating

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Serial No. 87419581

that, for rational reasons, more or less weight has been given to a particular feature

of a mark, provided the ultimate conclusion rests on consideration of the marks in

their entireties.’” Detroit Athletic, 128 USPQ2d at 1051 (quoting In re Nat’l Data

Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985)). We will first determine

the dominant portions of the marks because Applicant and the Examining Attorney

disagree on that issue with respect to the cited mark.

Applicant argues that the “most distinctive element of the Cited mark is not the

literal word Msytic [sic] but instead the stylized design,” 4 TTABVUE 6, which

Applicant claims “is not simply a font change but a customize[d] design which serves

to visually distinguish the Cited Mark from Applicant’s Mark.” Id. Applicant argues

that this case is similar to In re Covalinski, 113 USPQ2d 1166 (TTAB 2014), in which

the Board compared the applicant’s REDNECK RACEGIRL composite mark shown

below:

to the cited standard character mark RACEGIRL, and found “that the overall

commercial impression of Applicant’s mark is dominated by its design features,

particularly the large double-letter RR configuration,” id. at 1169, which made the

mark “so different from the registered mark that even when used on in-part identical

goods, confusion is unlikely.” Id.

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Serial No. 87419581

The Examining Attorney responds that “registrant’s mark ‘MYSTIC’ is minimally

stylized — in font style only,” 6 TTABVUE 6, and that Applicant’s argument is

meritless in any event because Applicant’s mark is a standard character mark that

“could be presented in the same manner of display.” Id. at 7. We agree with the

Examining Attorney on both points.

“In the case of a composite mark containing both words and a design, ‘the verbal

portion of the mark is the one most likely to indicate the origin of the goods [or

services] to which it is affixed.’” Viterra, 101 USPQ2d at 1908 (quoting CBS Inc. v.

Morrow, 708 F.2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)); see also In re Aquitaine

Wine USA, LLC, 126 USPQ2d 1181, 1184 (TTAB 2018). “The verbal portion of a word

and design mark ‘likely will appear alone when used in text and will be spoken when

requested by consumers,’” id. (quoting Viterra, 101 USPQ2d at 1911), and it “is

normally accorded greater weight because it would be used by purchasers to request

the goods [or services].’” Id. (quoting L.C. Licensing, Inc. v. Berman, 86 USPQ2d 1883,

1887 (TTAB 2008)).

In Covalinski, the Board acknowledged the general rule discussed in Viterra, but

stated that “[w]hile it is often true that the words in a composite word and design

mark are considered to be dominant, that is not always the case.” 113 USPQ2d at

1168. The decision displayed examples of several composite marks from previous

cases that were found to be exceptions to the general rule. Id. at 1168-69.22

22Ferro Corp. v. Ronco Labs., Inc., 356 F.2d 122, 148 USPQ 497 (CCPA 1966) (FERRO-GARD
and design for rust preventative oils not confusingly similar to various FERRO-formative
marks for industrial compounds); In re White Rock Distilleries, Inc., 97 USPQ2d 1282 (TTAB
2009) (VOLTA in standard characters for caffeine-infused drink not confusingly similar to
– 14 –
Serial No. 87419581

We find that the cited mark in this case is not one of those exceptions. We agree

with the Examining Attorney that the stylization of the word “Mystic” in the cited

mark is minimal, particularly in comparison to the composite marks discussed and

displayed in Covalinski. Consumers would read and speak the cited mark simply as

the word “Mystic” and would use that word to refer to Registrant’s hotel when booking

rooms or recommending it to others. The general rule discussed in Viterra thus

applies here, and we find that the word Mystic is the dominant element of the cited

mark.

Applicant does not dispute that the word MYSTIC is also the dominant element

of its standard character mark MYSTIC MOTEL. MYSTIC is the first word in the

mark and the word MOTEL that follows MYSTIC has little or no source-identifying

significance because it is at least highly descriptive of the “resort hotel services”

identified in the application, and has been disclaimed.23 See, e.g., Detroit Athletic, 128

USPQ2d at 1049-50 (Board properly focused on the words DETROIT ATHLETIC as

the dominant portions of the marks DETROIT ATHLETIC CO. and DETROIT

ATHLETIC CLUB because DETROIT ATHLETIC were the first words in the marks

and the words CO. and CLUB were non-source identifying and had been disclaimed).

TERZA VOLTA and design for wine); Parfums de Couer Ltd. v. Lazarus, 83 USPQ2d 1012
(TTAB 2007) (BODYMAN and design for a television series not confusingly similar to BOD
MAN and BOD for fragrances); Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d
1477 (TTAB 1987) (STEVE’S and design for restaurant services not confusingly similar to
STEVE’S for ice cream).
23 June 7, 2017 Examiner’s Amendment at 1.

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Serial No. 87419581

We turn now to the comparison of the marks in their entireties, giving greater weight

in that comparison to the shared dominant word MYSTIC.

With respect to sound, Applicant does not argue, and there is nothing in the record

to suggest, that the shared word MYSTIC would be pronounced differently in each

mark. While there are differences in the number of syllables in the marks when they

are spoken due to the presence of the word MOTEL in Applicant’s mark, the aural

identity of the word MYSTIC in the marks makes them similar in sound when

considered in their entireties.

As to appearance, as discussed above, the stylization of the cited mark is relatively

minor, and the standard character and stylized marks per se are visually similar due

to the presence of the shared dominant word MYSTIC, particularly taking into

account that “marks ‘must be considered . . . in light of the fallibility of memory’ and

‘not on the basis of side-by-side comparison.’” St. Helena Hosp., 113 USPQ2d at 1085

(quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d 683,

196 USPQ 1, 2 (CCPA 1977)). Moreover, as the Examining Attorney correctly argues,

Applicant’s standard character mark “may be displayed in any lettering style,” 6

TTABVUE 6, including “in the same manner of display” as the cited mark. Id. at 7.

The words MYSTIC MOTEL thus “could be used in any typeface, color, or size,

including in the same stylization” as the cited mark. Anheuser-Busch, LLC v.

Innvopak Sys. Pty Ltd., 115 USPQ2d 1816, 1823 (TTAB 2015); see also Aquitaine

Wine USA, 126 USPQ2d at 1186-87. The display of Applicant’s mark in the stylized

font of the cited mark would make the marks even more similar in appearance.

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Serial No. 87419581

Finally, with respect to connotation and commercial impression, Applicant argues

that “the inclusion of ‘Motel’ in the Applicant’s mark immediately infers a property

distinct from a Hotel,” 4 TTABVUE 6, and that “hotels tend to be viewed as higher-

end properties while motels tend to be viewed as lower-end properties.” Id. at 6-7.

According to Applicant, “[w]hile hotels and motels each provide lodging, consumers

perceive the terms differently which shall mitigate any consumer confusion.” 7

TTABVUE 2. The Examining Attorney responds that Applicant “fails to explain why

that distinction is at all meaningful, where the marks are otherwise identical, and,

where ‘motel’ fails to provide any source indicating significance for either hotel, or

motel, services.” 6 TTABVUE 6.

Applicant offers no evidence supporting its argument that “hotels tend to be

viewed as higher-end properties while motels tend to be viewed as lower-end

properties,” 4 TTABVUE 6-7, and the record casts doubt on the different perceptions

claimed by Applicant because the evidence suggests that the words “hotel” and

“motel” are often used interchangeably, that facilities that could be described as

“motels,” defined as “establishment[s] which provide[ ] lodging and parking and in

which the rooms are usually accessible from an outdoor parking area,”24 may instead

be described as “hotels,” and that some facilities identified as “hotels” offer budget

24MERRIAM-WEBSTER DICTIONARY (merriam-webster.com, last accessed on March 13, 2019).
The Board may take judicial notice of dictionary definitions, including online dictionaries
that exist in printed form or regular fixed editions. Univ. of Notre Dame du Lac v. J.C.
Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505
(Fed. Cir. 1983); In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006).

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Serial No. 87419581

daily room rates that, in comparison to rates for other nearby facilities, are consistent

with a perception that these hotels are “lower-end properties.” 4 TTABVUE 7.25

Moreover, we must consider the meaning of Applicant’s mark in the context of the

identified services with which Applicant intends to use it. Coach Servs., 101 USPQ2d

at 1721-22. The application covers a subset of “hotel services,” specifically “resort

hotel services.” Applicant’s claim that “the inclusion of ‘Motel’ in the Applicant’s Mark

immediately infers a property distinct from a Hotel,” 7 TTABVUE 2, is belied by the

fact that when consumers encounter the mark, it will be used with a “resort hotel.”26

The use of Applicant’s MYSTIC MOTEL mark in connection with a lodging facility

expressly identified as a “resort hotel” seems at least as likely to connote a “higher-

end” property as a “lower-end” property.

In any event, because we give greater weight to the dominant word MYSTIC in

Applicant’s mark in our comparison of the marks in their entireties, any slight

difference between the connotation and commercial impression of the marks resulting

from the presence of the non-source identifying word MOTEL in Applicant’s mark is

outweighed by the similarity of the meaning of the mark resulting from the presence

of the shared word MYSTIC. Indeed, given the interchangeability of the words “hotel”

25April 4, 2018 Final Office Action at 56-59 (tripadvisor.com pages describing and displaying
“Mystic Hotels” in and around Mystic, Connecticut, including a number with daily room rates
as low as $47).
26The term “resort hotel” means, inter alia, “a fashionable hotel usually in a resort area.”
July 11, 2017 Letter of Protest Memorandum at 9 (THE FREE DICTIONARY). As noted above,
Registrant describes its hotel as a “resort destination” that offers “luxurious accommodations,
modern amenities and perks including complimentary Wi-Fi, valet parking, indoor pool and
access to Dakotah! Sport and Fitness.” April 4, 2018 Final Office Action at 27.

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Serial No. 87419581

and “motel” suggested by the record, to the extent that the word MOTEL in the

MYSTIC MOTEL mark signals a different form of resort hotel services, as Applicant

claims, a consumer familiar with Registrant’s stylized MYSTIC mark for hotel

services could readily believe that the owner of that mark had expanded its business

into a different form of hotel under the MYSTIC MOTEL mark.

The marks are similar in appearance, sound, connotation, and commercial

impression when considered in their entireties, and the first du Pont factor supports

a finding of a likelihood of confusion, especially given the lower degree of similarity

required for confusion to be likely arising from the legal identity of the services.

C. Purchase Conditions

“The fourth DuPont factor considers ‘[t]he conditions under which and buyers to

whom sales are made, i.e. ‘impulse vs. careful sophisticated purchasing.’” Stone Lion,

110 USPQ2d at 1162 (quoting du Pont, 177 USPQ at 567). Applicant argues that

“[c]onsumers looking to visit or stay in hotels and motels are not impulse purchasers,”

4 TTABVUE 7, that “[s]electing a place to lodge is something undertaken with

significant research,” 7 TATBVUE 3, and that “consumers are going to spend time

determining which property to visit or stay in before doing so.” 4 TTABVUE 7.

Applicant concludes that the differences in the marks “provide sufficient information

to allow their sophisticated consumers to not be confused.” Id. The Examining

Attorney responds that “Applicant offers no evidence, just argument, how consumers

might be affected by confusingly similar names used by competing resorts when

determining which property to visit,” 6 TTABVUE 8, and that “even if consumers of

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Serial No. 87419581

the services could considered sophisticated and discriminating,” id. at 9, they are not

immune from source confusion. Id. We agree with the Examining Attorney.

Our primary reviewing court recently reminded us that “[a]ttorney argument is

no substitute for evidence.” Zheng Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127

USPQ2d 1797, 1799 (Fed. Cir. 2018) (quoting Enzo Biochem, Inc. v. Gen-Probe, Inc.,

424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)). Applicant offers no evidence

that purchasers of hotel services, including resort hotel services, exercise any

heightened degree of care in selecting lodging, and the record suggests that price

savings may be a more significant factor in selecting hotel services than the identity

of the provider of those services.27 Even assuming, however, that some purchasers of

hotel services, including resort hotel services, exercise significant care, “Board

precedent requires the decision to be based ‘on the least sophisticated potential

purchasers.’” Stone Lion, 110 USPQ2d at 1163 (quoting Gen. Mills, Inc. v. Fage Dairy

Proc. Indus. S.A., 100 USPQ2d 1584, 1600 (TTAB 2011), judgment set aside on other

grounds, 2014 WL 343267 (TTAB Jan. 22, 2014)). As discussed above, members of the

general public consume hotel services, including resort hotel services, and there is no

evidence that the least sophisticated purchasers in the general public will exercise

anything other than ordinary care. We find that the fourth du Pont factor is neutral

in our analysis.

27 April 4, 2018 Final Office Action at 56-59.

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Serial No. 87419581

D. The Number and Nature of Similar Marks in Use

The sixth du Pont factor “considers ‘[t]he number and nature of similar marks in

use on similar goods [or services].’” Omaha Steaks Int’l Inc. v. Greater Omaha Packing

Co., 908 F.3d 1315, 128 USPQ2d 1686, 1693 (Fed. Cir. 2018) (quoting du Pont, 177

USPQ at 567). “The purpose of introducing evidence of third-party use is ‘to show that

customers have become so conditioned by a plethora of such similar marks that

customers have been educated to distinguish between different [such] marks on the

bases of minute distinctions.’” Id. (quoting Palm Bay Imps., 73 USPQ2d at 1694)

(internal quotation omitted).28

Applicant argues that there is no likelihood of confusion because of the number of

similar marks in use. 4 TTABVUE 7. Applicant relies solely on the webpages of the

California hotel and the Florida resort and golf club discussed above, but other

webpages regarding the California hotel,29 as well as webpages regarding hotels in

and around Mystic, Connecticut,30 were made of record by the Examining Attorney,

and we will consider all of this evidence for whatever probative value it may have

under the sixth du Pont factor.

The webpages regarding “Mystic Hotels” in Mystic, Connecticut reflect the use of

“Mystic” in a purely geographic sense to identify hotels located in or around that city

(e.g., “Hilton Mystic,” “Inn at Mystic,” and “Howard Johnson Inn Mystic”). These non-

28Applicant does not expressly offer the third-party uses for this purpose, but rather to show
that “no evidence exists to show any consumer confusion has arisen based on the concurrent
use.” 4 TTABVUE 7.
29 April 4, 2018 Final Office Action at 41-52.
30 Id. at 53-59.

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Serial No. 87419581

trademark uses are not probative of whether the cited mark is entitled to only to a

narrow scope of protection, or whether consumers are able to distinguish between the

subject marks here.31

The uses of MYSTIC as a service mark for the California hotel and the Florida

resort and golf club discussed and displayed in Applicant’s main brief fall far short of

the sort of voluminous or extensive evidence of third-party use and registration that

the Federal Circuit has held to be probative under the sixth du Pont factor of the

weakness of a mark, or the ability of consumers to distinguish between two marks

containing common weak elements. See Inn at St. John’s, 126 USPQ2d at 1746 (four

third-party registrations and no third-party uses were “a far cry from the large

quantum of evidence of third-party use and third-party registrations that was held to

be significant” in the Federal Circuit’s decisions in Jack Wolfskin Ausrustung Fur

Draussen GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116

31 Applicant also argues, under the twelfth du Pont factor discussed below, that the cited
mark itself “is geographically descriptive” because “the term Mystic is based on Mystic Lake
located about 10 miles from the Mystic Lake Casino (owned by the Shakopee Mdewakanton
Sioux Community) and the location of the services for which the Cited Mark is used.” 4
TTABVUE 8. Applicant cites Registrant’s alleged “family of Mystic trademarks” based on the
information contained in the list of registrations in Applicant’s main brief, and argues that
the “Mystic brand is based on the proximity of the Mystic Lake Casino to the Mystic Lake in
Minnesota (both on the tribal lands of [Registrant]).” Id. Applicant claims that “this
geographic descriptiveness . . . dramatically limits any potential confusion since the Cited
Mark is entitled to a narrower protection than a strong mark.” Id. As discussed above, we
acknowledge that Registrant owns four registrations of other MYSTIC-formative marks, as
described in Applicant’s main brief, but Applicant’s argument constitutes an impermissible
collateral attack on the cited registration, which we cannot entertain on this ex parte appeal.
See, e.g., Detroit Athletic, 128 USPQ2d at 1053; In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534-35 (Fed. Cir. 1997); In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1363
(TTAB 2007) (applicant’s claim that the cited mark was merely descriptive and weak was an
impermissible collateral attack on the cited registration).

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Serial No. 87419581

USPQ2d 1129, 1136 (Fed. Cir. 2015) and Juice Generation, Inc. v. GS Enters. LLC,

794 F.3d 1334, 115 USPQ2d 1671, 1674 Fed. Cir. 2015)).32 On this record, we find

that the sixth du Pont factor is neutral in our analysis.

E. Twelfth du Pont Factor

Applicant invokes the twelfth du Pont factor, which is the “extent of potential

confusion, i.e., whether de minimis or substantial.” du Pont, 177 USPQ at 567.

Applicant argues that Registrant is identified in the cited registration as a federally

recognized Indian tribe,33 and operates a hotel under the cited mark on tribal land in

Minnesota under the Indian Gaming Regulatory Act of 1998, which Applicant claims

makes any expansion of use of the cited mark “outside of the tribal lands . . . remote

at best and possibly impossible.” 4 TTABVUE 7-8. According to Applicant, “[s]uch

limits of expansion dramatically limit any potential for confusion.” Id. at 8.

Applicant’s argument is unavailing. Applicant “seeks a geographically

unrestricted registration under which it might expand throughout the United

States.” Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390,

393 (Fed. Cir. 1983). The cited registration is also geographically unrestricted, which

presumptively gives Registrant “the exclusive right to use its mark throughout the

United States.” Id. See also In re Appetito Provisions, Inc., 3 USPQ2d 1553, 1554 n.4

32 In Jack Wolfskin, there were at least 14 third-party registrations and uses of paw print
marks that showed the weakness of that design element in the opposer’s mark, 116 USPQ2d
at 1136 n.2, while in Juice Generation, there were approximately 26 third-party registrations
and uses of marks containing the words “Peace” and “Love” that showed the weakness of
those words in the opposer’s marks. 115 USPQ2d at 1673 n.1.
33 July 12, 2017 Office Action at 2.

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Serial No. 87419581

(TTAB 1987). This is not a concurrent use proceeding, and in analyzing the du Pont

factors, we cannot consider the possible geographically separate uses of the subject

marks by Applicant and Registrant. Id.

F. Conclusion

All of the relevant du Pont factors either support a finding of a likelihood of

confusion, or are neutral. The services, channels of trade, and classes of consumers

are legally identical, the marks are quite similar in appearance, sound, connotation,

and commercial impression when considered in their entireties, the least

sophisticated purchasers of resort hotel services are likely to exercise only ordinary

care, and there is insufficient evidence of third-party use of similar marks for similar

services to show that the cited mark is weak or that the two marks can be

distinguished on the basis of the minor differences between them. We find, on the

basis of the record as a whole, that consumers of hotel services who are familiar with

the cited stylized MYSTIC mark are likely to believe mistakenly that resort hotel

services offered under the standard character MYSTIC MOTEL mark originate with,

or are licensed, authorized, or sponsored by, the owner of the stylized MYSTIC mark.

Decision: The refusal to register is affirmed.

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