throbber
THIS DECISION IS NOT
`A PRECEDENT OF THE
`TTAB
`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`Trademark Trial and Appeal Board
`P.O. Box 1451
`Alexandria, VA 22313-1451
`
`
`
`GCP
`
`
`
`
`
`
`
`
`
`
` Mailed: April 12, 2012
`
`Opposition No. 91191947
`
`HLT Domestic IP LLC
`
`
`v.
`
`
`Eric Marcus
`
`
`Before Seeherman, Ritchie, and Wolfson,
`Administrative Trademark Judges.
`
`By the Board:
`
`
`
`Eric Marcus (“applicant”) seeks to register the mark
`
`WOOFDORF-ASTORIA DOG HOTEL & DAY SPA in standard characters
`
`for “kennel services, namely, boarding for pets” in
`
`International Class 43.1
`
`HLT Domestic IP LLC (“opposer”) has filed a notice of
`
`opposition to registration of applicant’s mark on the grounds
`
`of likelihood of confusion and dilution by blurring. In
`
`support of its asserted claims, opposer has pleaded that it
`
`has common law rights in the mark WALDORF-ASTORIA, previously
`
`used on or in connection with hotel services and related
`
`
`1 Application Serial No. 77633434, filed on December 15, 2008,
`based on use in commerce under Trademark Act Section 1(a), 15
`U.S.C. Section 1051(a), claiming September 20, 2006 as both the
`date of first use and the date of first use in commerce.
`Applicant has provided a disclaimer of the wording “DOG HOTEL &
`DAY SPA.”
`
`
`

`
`Opposition No. 91191947
`
`
`goods, as well as ownership of the following registered marks:
`
`(1) WALDORF-ASTORIA in standard characters for “hotel
`
`services” in International Class 42;2 (2) WALDORF=ASTORIA
`
`COLLECTION in standard characters for “hotel services;
`
`restaurants and catering services; provision of facilities for
`
`meetings, conferences and exhibitions” in International Class
`
`43;3 and (3) WALDORF=ASTORIA COLLECTION and design for “hotel
`
`services; restaurants and catering services; provision of
`
`facilities for meetings, conferences and exhibitions” in
`
`International Class 43.4
`
`Applicant, in his answer, has denied the salient
`
`allegations of the notice of opposition.
`
`This case now comes before the Board for consideration of
`
`(1) applicant’s motion for summary judgment on opposer’s
`
`asserted ground of likelihood of confusion5 and (2) opposer’s
`
`motion for summary judgment on its asserted claim of dilution
`
`by blurring. The motions are fully briefed.
`
`Summary judgment is an appropriate method of disposing
`
`of cases that present no genuine disputes of material fact,
`
`
`2 Registration No. 1065983, issued on May 17, 1977. Combined
`Section 8/Section 9 accepted/granted; renewed.
`3 Registration No. 3165117, issued on October 31, 2006.
`4 Registration No. 3267555, issued on July 24, 2007.
`5 Although the opening paragraph of applicant’s motion seeks
`entry of summary judgment dismissing the opposition in its
`entirety, we note that applicant only argues the merits of
`opposer’s pleaded likelihood of confusion claim and concludes his
`motion by stating that confusion is not likely. Accordingly, we
`construe applicant’s motion as only concerning opposer’s pleaded
`claim of likelihood of confusion.
`
`
`
`
`2
`
`

`
`Opposition No. 91191947
`
`
`thus leaving the case to be resolved as a matter of law.
`
`See Fed. R. Civ. P. 56(a). The evidence must be viewed in a
`
`light favorable to the nonmoving party, and all justifiable
`
`inferences are to be drawn in the nonmovant’s favor.
`
`Lloyd’s Food Products, Inc. v. Eli’s, Inc, 987 F.2d 766, 25
`
`USPQ2d 2027, 2029 (Fed. Cir. 1993); Opryland USA Inc. v. The
`
`Great American Music Show, Inc., 970 F.2d 847, 23 USPQ2d
`
`1471 (Fed. Cir. 1992).
`
`Here, applicant has the burden of demonstrating the
`
`absence of any genuine dispute of material fact, and that he
`
`is entitled to judgment as a matter of law, with respect to
`
`opposer’s claim of likelihood of confusion, and opposer has
`
`the corresponding burden with respect to its dilution claim.
`
`See Celotex Corp. v. Catrett, 477 U.S. 317 (1986); Sweats
`
`Fashions Inc. v. Pannill Knitting Co. Inc., 833 F.2d 1560, 4
`
`USPQ2d 1793 (Fed. Cir. 1987).
`
`We first turn to applicant’s motion for summary
`
`judgment regarding opposer’s asserted ground of likelihood
`
`of confusion. In support of his motion, applicant
`
`essentially argues that since his involved mark constitutes
`
`an effective parody of opposer’s pleaded marks, there can be
`
`no likelihood of confusion.
`
`In response, opposer maintains that applicant’s motion
`
`should be summarily dismissed inasmuch as it is not
`
`supported by any evidence nor does the motion provide any
`
`
`
`3
`
`

`
`Opposition No. 91191947
`
`
`analysis of the likelihood of confusion factors under In re
`
`E.I. du Pont Nemours & Co., 476 F.2d 1357 (CCPA 1973) and,
`
`therefore, applicant has failed to discharge his burden of
`
`establishing that no genuine dispute of material fact
`
`remains and that he is entitled to judgment as a matter of
`
`law. Opposer further argues that parody is not a defense to
`
`a claim of likelihood of confusion and that, in any event,
`
`genuine disputes of material fact exist, at a minimum, as to
`
`the relatedness of the parties’ respective services.6 In
`
`particular, opposer maintains that it offers a wide variety
`
`of pet-related goods and services that are identical to or
`
`overlap with applicant’s services, including, among others,
`
`(1) permitting and encouraging hotel guests to bring their
`
`pets with them during their stay, (2) dog walking, grooming,
`
`shopping, spa and feeding services, and (3) providing dog
`
`beds, collars, leashes and pet bowls. In support thereof,
`
`opposer has submitted the declaration of Barbara Arnold,
`
`opposer’s Director of Intellectual Property, who, by her
`
`declaration, attests to the types of pet services provided
`
`by opposer at its hotels and resorts.
`
`Parody is not, per se, a “defense” to a claim of
`
`likelihood of confusion; rather, “it is merely a way of
`
`
`6 We note that opposer also argues that applicant’s motion for
`summary judgment should be denied with regard to opposer’s
`pleaded claim of dilution. However, as previously noted, we have
`construed applicant’s motion to only concern opposer’s pleaded
`claim of likelihood of confusion.
`
`
`
`4
`
`

`
`Opposition No. 91191947
`
`
`phrasing the traditional response that customers are not
`
`likely to be confused as to source, sponsorship or
`
`approval.” Schieffein & Co. v. Jack Co. of Boca, 725 F.
`
`Supp. 1314, 1323 (S.D.N.Y. 1989) (quoting J. Thomas
`
`McCarthy, McCarthy on Trademarks and Unfair Competition,
`
`§ 31:156 (4th ed. database updated 2012)). Thus, parody is
`
`simply another factor which is relevant to the analysis of
`
`likelihood of confusion because parody is merely another way
`
`of arguing that confusion is not likely. Nike, Inc. v. Just
`
`Did It Enterprises, 6 F.3d 1125, 28 USPQ2d 1942 (7th Cir.
`
`1993); Utah Lighthouse Ministry v. Found. For Apologetic
`
`Info. and Research, 527 F.3d 1045, 86 USPQ2d 1865 (10th Cir.
`
`1988). In other words, even if the defendant’s mark has a
`
`parody aspect, that is not necessarily sufficient to prevent
`
`likelihood of confusion. See Elvis Presley Enterprises Inc.
`
`v. Capece, 141 F.3d 188, 46 USPQ2d 1737, 1744 (5th Cir.
`
`1998); Dr. Suess Enterprises L.P. v. Penguin Books USA, 109
`
`F.3d 1394, 42 USPQ2d 1184, 1193 (9th Cir. 1977).
`
`In view of the fact that parody does not, as a matter
`
`of law, avoid a likelihood of confusion7 and because this is
`
`the sole basis for applicant’s motion, applicant having
`
`failed to address any of the du Pont likelihood of confusion
`
`factors or submit any evidence in support of his motion for
`
`
`7 As noted infra, there is also a genuine issue as to whether
`applicant’s mark would be perceived as a parody.
`
`
`
`
`5
`
`

`
`Opposition No. 91191947
`
`
`summary judgment, we find that applicant has failed to carry
`
`his burden of demonstrating that he is entitled to summary
`
`judgment dismissing opposer’s claim under Section 2(d) of
`
`the Trademark Act.
`
`Accordingly, applicant’s motion for summary judgment on
`
`opposer’s asserted ground of likelihood of confusion is
`
`denied.
`
`We next turn to opposer’s motion for summary judgment
`
`on its asserted claim of dilution by blurring. When an
`
`application to register a mark is challenged on the grounds
`
`of dilution, as is the case here, the Board looks to three
`
`elements: (1) whether the opposer’s mark is famous, (2)
`
`whether the opposer’s mark became famous prior to
`
`applicant’s use of the mark; and (3) whether the applicant’s
`
`mark is likely to blur the distinctiveness of the opposer’s
`
`famous mark. National Pork Board v. Supreme Lobster and
`
`Seafood Co., 96 USPQ2d 1479, 1494-5 (TTAB 2010).8
`
`
`8 In determining whether a mark is likely to cause dilution by
`blurring, we consider all factors relevant to the issue,
`including the following six factors that are enumerated in
`Section 43(c)(2)(B) of the Trademark Act:
`(i)
`The degree of similarity between the mark or trade
`name and the famous mark;
`
`(ii)
`
`(iii)
`
`(iv)
`
`The degree of inherent or acquired distinctiveness of
`the famous mark;
`
`The extent to which the owner of the famous mark is
`engaging in substantially exclusive use of the mark;
`
`The degree of recognition of the famous mark;
`
`
`
`6
`
`

`
`Opposition No. 91191947
`
`
`As to the first and second elements, there are no
`
`genuine disputes of material fact that opposer’s pleaded
`
`WALDORF-ASTORIA mark is famous and that opposer’s WALDORF-
`
`ASTORIA mark acquired its fame prior to applicant’s first
`
`use of his mark. Applicant, both by his own testimony and
`
`in his response to opposer’s motion for summary judgment,
`
`has conceded both of these points. See Exhibit G of
`
`opposer’s motion consisting of excerpts of applicant’s
`
`discovery deposition transcript (hereinafter “Marcus Dep.”
`
`at 110:18-111:7, 111:13-23, 115:12-19); see also p. 2 of
`
`applicant’s response to opposer’s motion for summary
`
`judgment.
`
`It is only on the final element of the three-part test,
`
`i.e., in considering the six non-exclusive factors set forth
`
`in Section 43(c)(2)(B) of the Trademark Act, that the
`
`parties take contradictory positions. With respect to this
`
`last element, opposer maintains that applicant has conceded
`
`that (1) the parties’ marks are similar and that he intended
`
`to “mimic” opposer’s WALDORF ASTORIA mark, see p. 6 of
`
`applicant’s response to opposer’s motion, and (2) he intends
`
`consumers to associate his mark with the WALDORF-ASTORIA
`
`
`(v)
`Whether the user of the mark or trade name intended to
`create an association with the famous mark; and
`
`(vi)
`
`Any actual association between the mark or trade name
`and the famous mark.
`
`15 U.S.C. § 1125(c)(2)(B).
`
`
`
`7
`
`

`
`Opposition No. 91191947
`
`
`mark. Id. at p. 4. Opposer also argues that applicant
`
`believes his mark is a “parody on the Waldorf Astoria,” and
`
`has testified that “many consumers” have given him feedback
`
`that his mark accomplishes its intended goal of being a
`
`parody. See Marcus Dep. 41:19, 41-8-15, 112:1-7.
`
`Moreover, opposer contends that it is not aware of any other
`
`party with a “legitimate right to use any confusingly
`
`similar mark,” see p. 18 of opposer’s motion, that applicant
`
`has not produced any such evidence, and that in a search
`
`opposer conducted using the Google search engine, “at least
`
`the first 100 hits relate solely to [opposer’s] mark and
`
`hotels, thus evidencing the unique association of the mark
`
`with [opposer].” See p. 18 and Exhibit E of opposer’s
`
`motion. Further, opposer argues that its WALDORF-ASTORIA
`
`mark is entitled to a presumption of inherent
`
`distinctiveness by virtue of the fact that it has been
`
`registered on the Principal Register without the requirement
`
`of a showing of acquired distinctiveness. Based on the
`
`foregoing, opposer maintains that it has shown that
`
`applicant’s mark is likely to blur the distinctiveness of
`
`opposer’s famous WALDORF-ASTORIA mark.
`
`As evidence in support of its motion, opposer has
`
`submitted, inter alia,
`
`(1) Exhibit E consisting of results from a Google
`search for the phrase “Waldorf Astoria”;
`
`
`
`
`8
`
`

`
`Opposition No. 91191947
`
`
`(2) Exhibit F which consists of Trademark Application
`and Retrieval (“TARR”) copies of opposer’s pleaded
`registrations; and
`
`(3) Exhibit G consisting of excerpts of applicant’s
`discovery deposition transcript.
`
`In response, applicant argues that the Board should
`
`deny opposer’s motion for summary judgment because
`
`established law permits applicant’s use of his involved mark
`
`as a permissible parody which does not blur opposer’s
`
`WALDORF-ASTORIA mark. Further, while applicant concedes
`
`that opposer’s WALDORF-ASTORIA mark is famous, he
`
`nonetheless contends that it is this very fame that makes
`
`his parody successful.9
`
`Moreover, while applicant concedes that opposer’s
`
`WALDORF-ASTORIA marks are distinctive, famous and strong and
`
`that he intended to associate his mark with opposer’s famous
`
`marks, he nonetheless argues that his use of the famous
`
`WALDORF-ASTORIA mark as a parody does not impair the
`
`distinctiveness of the famous mark, since the success of the
`
`parody depends upon the continued association of the mark
`
`
`9 Applicant also makes a number of points that appear to go
`primarily to the issue of likelihood of confusion, not dilution,
`namely, (1) applicant uses his mark as a hotel for dogs and there
`is no likelihood that consumers will confuse a dog kennel with a
`famous New York hotel icon, (2) applicant’s pet boarding services
`range from $38-$48 a night while opposer’s hotel charges many
`times more, (3) the accommodations for dogs at applicant’s hotel
`are substantially different from those offered by opposer, and
`(4) there is a clear difference in price, quality, market and
`service between a dog kennel and a world famous, widely known
`hotel of the caliber espoused by opposer.
`
`9
`
`
`
`
`
`

`
`Opposition No. 91191947
`
`
`with opposer and that a successful parody might actually
`
`enhance the famous mark’s distinctiveness by making it an
`
`icon. Finally, applicant maintains that his mark mimics,
`
`but is not identical to opposer’s WALDORF-ASTORIA marks and,
`
`therefore, applicant’s use is not so similar as to be likely
`
`to impair the distinctiveness of opposer’s famous WALDORF-
`
`ASTORIA marks.
`
`Analysis and Decision
`
`We initially note that parody is not delineated as a
`
`defense to a claim of dilution by blurring where the
`
`defendant uses the parody as its own designation of source,
`
`i.e., as a trademark or service mark. See Section 43(c)(3)
`
`of the Trademark Act, which provides the following
`
`exclusions to a claim of dilution:
`
`(3) Exclusions.--The following shall not be actionable
`as dilution by blurring or dilution by tarnishment
`under this subsection:
`
`(A) Any fair use, including a nominative or
`descriptive fair use, or facilitation of such fair
`use, of a famous mark by another person other than
`as a designation of source for the person's own
`goods or services, including use in connection with-
`
`(i) advertising or promotion that permits
`consumers to compare goods or services; or
`
`(ii) identifying and parodying, criticizing, or
`commenting upon the famous mark owner or the goods
`or services of the famous mark owner.
`
`15 U.S.C. § 1125(c)(3)(emphasis added).
`
`Under the statute’s plain language, parodying a famous
`
`mark is protected by the fair use exclusion only if the
`
`
`
`10
`
`

`
`Opposition No. 91191947
`
`
`parody is not “a designation of source for the person’s own
`
`goods or services.” Starbucks Corp. v. Wolfe’s Borough
`
`Coffee, Inc., 588 F.3d 97, 92 USPQ2d 1769, 1778 (2d Cir.
`
`2009) (“[defendant’s] use of the Charbucks Marks cannot
`
`qualify under the parody exception because the Charbucks
`
`Marks are used ‘as a designation of source for [defendant’s]
`
`own goods’”). Here, applicant is clearly using WOOFDORF-
`
`ASTORIA DOG HOTEL & DAY SPA as a source indicator for his
`
`identified pet boarding services. Accordingly, the fair use
`
`exclusion under Section 43(c)(3) of the Trademark Act is not
`
`applicable in this case.
`
`We note that applicant relies heavily on Louis Vuitton
`
`Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252, 84
`
`USPQ2d 1969 (4th Cir. 2007). In that case, although the
`
`Fourth Circuit noted that the fair use exception for
`
`parodies under Section 43(c)(3)(A) does not extend to
`
`parodies used as trademarks, the Court held that “a
`
`defendant’s use of a mark as a parody is relevant to the
`
`overall question of whether the defendant’s use is likely to
`
`impair the famous mark’s distinctiveness.” Louis Vuitton,
`
`84 USPQ2d at 1978. The Court explained:
`
`Factor (v) (whether the defendant intended to
`create an association with the famous mark) and
`factor (vi) whether there exists an actual
`association between the defendant’s mark and the
`famous mark) directly invite inquiries into the
`defendant’s intent in using the parody, the
`defendant’s actual use of the parody, and the
`effect that its use has on the famous mark. While
`
`
`
`11
`
`

`
`Opposition No. 91191947
`
`
`a parody intentionally creates an association with
`the famous mark in order to be a parody, it also
`intentionally communicates, if it is successful,
`that it is not the famous mark, but rather a
`satire of the famous mark. That the defendant is
`using its mark as a parody is therefore relevant
`in the consideration of these statutory factors.
`
`Id. at 1978-79.
`
`We further note that no other federal courts have
`
`adopted the Fourth Circuit’s interpretation that, even
`
`though the statute specifically excludes parody as a fair
`
`use defense to a dilution claim, the possible parody effect
`
`of the defendant’s mark should be considered in determining
`
`whether the plaintiff has proved dilution by blurring. In
`
`fact, the Second Circuit, in deciding the Starbucks case,
`
`specifically stated that “we need not adopt or reject Louis
`
`Vuitton’s parody holding,” because it found that the
`
`defendant’s use of its mark was not a parody that would
`
`favor defendant in the dilution analysis “even if we were to
`
`adopt the Fourth Circuit’s rule.” Starbucks Corp., 92
`
`USPQ2d at 1778.
`
`Just like the Second Circuit in Starbucks, “we need not
`
`adopt or reject Louis Vuitton’s parody holding” at this
`
`point. Instead, we find that there is a genuine dispute as
`
`to whether applicant’s mark would be viewed by the consuming
`
`public as a parody, as applicant asserts, or as an attempt
`
`by applicant to achieve his own branding goals by conveying
`
`that his services provide a level of luxury. We also find
`
`
`
`12
`
`

`
`Opposition No. 91191947
`
`
`that there is a genuine dispute as to the similarity of the
`
`services, and that this question affects whether applicant’s
`
`mark would be viewed as a parody. See Harley Davidson, Inc.
`
`v. Grottanelli, 1164 F.3d 806, 813 (2d Cir. 1999)(“[P]arodic
`
`use is sharply limited” in circumstances where “an alleged
`
`parody of a competitor’s mark [is used] to sell a competing
`
`product”); Starbucks Corp. v. Wolfe’s Borough Coffee Inc.,
`
`supra.
`
`In view thereof, opposer’s motion for summary judgment
`
`on its asserted claim of dilution by blurring is denied.
`
`In summary, both opposer’s and applicant’s motions for
`
`summary judgment are denied.10
`
`
`
`Trial Schedule
`
`Proceedings herein are resumed. Discovery is closed.
`
`Trial dates, beginning with the deadline for opposer’s
`
`pretrial disclosures, 11 are reset as follows:
`
`
`10 The parties should note that the evidence submitted in
`connection with a motion for summary judgment or opposition
`thereto is of record only for consideration of that motion. Any
`such evidence to be considered at final hearing must be properly
`introduced in evidence during the appropriate trial period. See
`Levi Strauss & Co. v. R. Joseph Sportswear Inc., 28 USPQ2d 1464
`(TTAB 1993); and Pet Inc. v. Bassetti, 219 USPQ 911 (TTAB 1983).
`Additionally, the issues for trial are not limited to those we
`have identified in explaining the denial of the parties’
`respective motions for summary judgment. Rather, the issues for
`trial are framed by the pleadings and any issues not pleaded but
`which may yet be tried by express or implied consent of the
`parties.
`11 We note that although both applicant and opposer filed their
`respective motions for summary judgment following the deadline
`for opposer’s pretrial disclosures, we have nonetheless reset
`
`
`
`13
`
`

`
`Opposition No. 91191947
`
`
`Plaintiff's Pretrial
`Disclosures
`Plaintiff's 30-day Trial Period
`Ends
`Defendant's Pretrial
`Disclosures
`Defendant's 30-day Trial Period
`Ends
`Plaintiff's Rebuttal
`Disclosures
`Plaintiff's 15-day Rebuttal
`Period Ends
`
`
`5/12/2012
`
`6/26/2012
`
`7/11/2012
`
`8/25/2012
`
`9/9/2012
`
`10/9/2012
`
`In each instance, a copy of the transcript of
`
`testimony, together with copies of documentary exhibits,
`
`must be served on the adverse party within thirty days after
`
`completion of the taking of testimony. Trademark Rule
`
`2.125.
`
`
`
`Briefs shall be filed in accordance with Trademark
`
`Rules 2.128(a) and (b). An oral hearing will be set only
`
`upon request filed as provided by Trademark Rule 2.129.
`
`
`this deadline to the extent that (1) opposer has yet to serve its
`pretrial disclosures or (2) our decision herein affects opposer’s
`pretrial disclosures that may have already been served.
`
`
`
`
`14

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