Proceeding
`Party
`
`Correspondence
`Address
`
`Submission
`Filer's Name
`Filer's e-mail
`Signature
`Date
`Attachments
`
`Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
`ESTTA143796
`ESTTA Tracking number:
`06/01/2007
`
`Filing date:
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`92045620
`Plaintiff
`VENTURE OUT PROPERTIES, LLC
`VENTURE OUT PROPERTIES, LLC
`
`,
`
`MARTIN E. HSIA
`CADE SCHUTTE, LLP
`1000 BISHOP STREET, SUITE 1200
`HONOLULU, HI 96813
`UNITED STATES
`mhsia@cades.com, cmiwa@cades.com
`Motion for Summary Judgment
`Martin E. Hsia, Reg. No. 32,471
`mhsia@cades.com, bhairston@cades.com
`/Martin E. Hsia/
`06/01/2007
`Motion for Summary Judgment.PDF ( 25 pages )(791608 bytes )
`Exhibits A-B.PDF ( 4 pages )(251188 bytes )
`Exhibit C.pdf ( 2 pages )(652335 bytes )
`Exhibits D-F.PDF ( 17 pages )(646387 bytes )
`Exhibits G-M.PDF ( 36 pages )(875797 bytes )
`Exhibit N-1.pdf ( 40 pages )(956080 bytes )
`Exhibit N-2.pdf ( 35 pages )(584122 bytes )
`Exhibits O-Y.PDF ( 39 pages )(648483 bytes )
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`VENTURE OUT PROPERTIES LLC,
`
`a California limited liability company,
`
`Petitioner,
`
`V.
`
`ORIENT—EXPRESS HOTELS INC.,
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`a Delaware corporation,
`
`Registrant.
`___________.__.________M1
`
`\/\/\/\y\/\/\/\_/s/xa;
`
`Cancellation No. 92045620
`
`Registration No. 2,851,141
`
`PETITIONER’S MOTION FOR SUMMARY ,[UDGl\'IENT
`
`Petitioner VENTURE OUT PROPERTIES LLC, a California limited liability
`company (“Petiti0ner” or “VOP LLC”), by and through its undersigned attorney, hereby moves
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`for summary judgment pursuant to Rule 56, Fed. R. Civ. P., and Trademark Rule 2.127(e),
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`granting this petition for cancellation of U.S. Registration 2,851,141 (the “Registration”) for
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`“LA CABANA”, which issued to ORIENT—EXPRESS HOTELS INC., a Delaware corporation
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`(“Registrant”), on June 8, 2004.
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`As set forth in the attached memorandum, declarations, and exhibits, this Motion
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`is made on the grounds that: (i) Petitioner has priority of use with respect to its “CABANA”
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`mark; and (ii) Registrant’s mark “LA CABANA” is confusingly similar to Petitioner’s
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`“CABANA” mark, and is used in connection with closely related goods or services, so that there
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`exists a likelihood of confusion under Section 2(d) of the Lanham Act, warranting cancellation
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`of the Registration. Petitioner respectfully submits that this petition for cancellation of
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`

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`U.S. Registration 2,851,141 must be granted pursuant to this Motion as a trial on the matter
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`would entail unnecessary fees and waste of the Board’s scarce resources.
`
`DATED: Honolulu, Hawaii, June 1, 2007.
`
`/"'1/\:'.=..-_-*2’
`
`flu:
`
`Martin E. Hsia, Reg. No. 32,471
`CADES SCHUTTE LLP
`
`A Limited Liability Law Partnership
`P.O. Box 939
`
`Honolulu, Hawaii 96808
`
`Tel: (808) 521-9200
`
`Attorney for Petitioner
`VENTURE OUT PROPERTIES LLC
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`Cancellation No. 92045620
`
`) ) )
`
`) )
`
`VENTURE OUT PROPERTIES LLC,
`
`a California limited liability company,
`
`Petitioner,
`
`V.
`
`) Registration No. 2,851,141
`
`) ) ) ) )
`
`ORIENT—EXPRESS HOTELS INC.,
`a Delaware corporation,
`
`Registrant.
`____________________________)
`
`MEMORANDUM IN SUPPORT OF PETITIONER’S
`
`MOTION FOR SUMMARY ,|UDGl\/IENT
`
`I.
`
`INTRODUCTION.
`
`Petitioner VENTURE OUT PROPERTIES LLC, a California limited liability
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`company (“Petitioner” or “VOP LLC”), respectfully submits this memorandum in support of its
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`Motion For Summary Judgment (the “Motion”). Pursuant to Rule 56, Fed. R. Civ. P., Petitioner
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`seeks summary adjudication that, based on the facts presented herein as to which there are no
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`genuine issues of material fact to be tried, and as a matter of law, U.S. Registration 2,851,141
`
`(the “Registration”) for “LA CABANA”, which issued to ORIENT—EXPRESS HOTELS INC.,
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`a Delaware corporation (“Registrant” or “Orient-Express”), on June 8, 2004, must be cancelled
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`under Section 2(d) of the Lanham Act.
`
`II.
`
`BACKGROUND.
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`In or about May 1999, Petitioner (through its predecessor—in—interest) acquired a
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`hotel located at 2551 Cartwright Road, Honolulu, Hawaii, where it began to provide hotel
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`services under the service mark “CABANA”,
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`_S_e_e_ Declaration of G. Lee FitzGerald attached
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`

`
`hereto (“FitzGerald Dec.”) at ‘]I 2. Petitioner and its related company have, for many years,
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`advertised, sold, and provided hotel services under the service mark “CABANA” (the “Cabana
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`Mar ”) in the United States. E. at ‘I{ 3. For example, attached hereto as Exhibit “A” is a true and
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`correct copy of the parking signage for the June (1999) grand opening for the hotel, referring to
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`the “Cabana” grand opening.
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`§c_:§:_ FitzGerald Dec. at 11 4. Also attached hereto as Exhibit “B” is
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`a true and correct copy of an advertisement from the classified section of the August 12, 1999
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`issue of the (San Francisco) Bay Area Reporter - advertising Petitioner’s hotel services under the
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`Cabana Mark.
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`_S__e§_ FitzGerald Dec. at ‘j[ 5. Attached hereto as Exhibit “C” is a picture showing
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`the “CABANA” Mark as it has appeared on the hotel since 1999 to the present. E FitzGerald
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`Dec. at ‘II 6. Since at least as early as 1999, Petitioner, and its related company, have had
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`extensive, exclusive, and continued use of “CABANA” in connection with hotel services.
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`_S_Efi FitzGerald Dec. at ‘H 7.
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`The hotel was originally acquired in 1999 by Venture Out, a California
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`corporation (“VO”). §_e_e FitzGerald Dec. at ‘}[8. G. Lee FitzGerald, whose declaration is
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`attached hereto in support of the Motion, was the president of V0. In or about May 2004, VO
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`formed The Cabana at Waikiki, LLC, a Hawaii limited liability company (“TCAW”), whose
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`sole member was VO. E FitzGerald Dec. at ‘][9 and Exhibit “D” attached hereto. VO
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`transferred the hotel and all related assets, including all of VO’s “intangible assets of the hotel
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`and tour operations including the trade names ‘CABANA’ and ‘CABANA AT WAIKIKI,’ all
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`customer lists, databases, Contact information, policies, procedures, business trade secrets and
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`goodwill”, to TCAW, pursuant to an Operating Agreement for the Cabana at Waikiki, LLC dated
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`as of May 1, 2004. §g FitzGerald Dec. at ‘][l0 and Exhibit “D” attached hereto, at Ex. A
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`attached thereto (emphasis added).
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`

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`In or about October 2004, the controlling interest in TCAW was sold and
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`transferred by VO to Petitioner VOP LLC, pursuant to an Assets Acquisition Agreement dated
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`October 30, 2004. fie; FitzGerald Dec. at ‘l[12, Exhibit
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`attached hereto, at Section 1.2.4
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`(defining the “Acquired Assets” to include “All of Seller’s membership interest in The Cabana at
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`Waikiki, LLC a Hawaii limited liability company and all rights and obligations relating
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`thereto”), and an Assignment of Membership Interest In The Cabana at Waikiki, LLC, a Hawaii
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`Limited Liability Company, dated October 31, 2004, a true and correct copy of which is attached
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`hereto as Exhibit “F”. As of February 7, 2005, the date that Petitioner VOP LLC filed its
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`application 76/630,391 (“Petitioner’s Application”) with the U.S. Patent and Trademark Office
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`(the “Office”) to register “CABANA” for “hotel services” in International Class 43, the
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`managers of Petitioner VOP LLC were G. Lee FitzGerald and his brother, Bruce FitzGera1d. See
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`FitzGerald Dec. at ‘][ 15 and Exhibit “G” attached hereto. Thus, Petitioner or a “related
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`company” (i.e. TCAW) within the meaning of 15 U.S.C. § 1127, was using the mark in
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`commerce as of the filing date of Petitioner’s application.
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`However, on or about March 22, 2000, Registrant Orient—Express filed
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`application serial no. 76/007,403 (the “Orient-Express Application”) for the mark “LA
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`CABANA” (the “Orient—Express Mark”) for “restaurant and bar services” in International
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`Class 42. On information and belief, the Orient—Express Application was filed on an intent-to-
`
`use basis as the Orient—Express Mark was selected for use in conjunction with a steakhouse
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`restaurant — apparently only located in Buenos Aires, Argentina — that Registrant acquired some
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`time after the original restaurant had closed in 1996 (E Exhibit “H” attached hereto, at page 7),
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`but that had not yet reopened for business as of the time the application was filed.
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`

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`In fact, Registrant did not use its “LA CABANA” Mark for several years because
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`it was relocating the restaurant. For instance, Registrant’s Second Request For Extension of
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`Time To File Statement of Use, filed in the Orient—Express Application on or about April 2,
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`2002, states as follows:
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`Applicant has a continued bona fide intention to use the mark in
`connection with the services identified in the Notice of Allowance.
`
`Applicant is engaged in site selection for one of two restaurants to be
`opened under the referenced name.
`
`_S_ep Exhibit “I” attached hereto (emphasis added).
`
`Similarly, Registrant’s Third Request For Extension of Time To File Statement of
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`Use, filed in the Orient-Express Application on or about October 3, 2002, states as follows:
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`Applicant is continuing its site selection for one of two restaurants to be
`opened under the referenced name.
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`§e_e Exhibit “J” attached hereto (emphasis added).
`
`Registrant’s Fourth Request For Extension of Time To File Statement of Use,
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`filed on or about April 3, 2003, states as follows:
`
`Applicant has completed its site selection for one of two restaurants to be
`opened under the referenced mark and anticipates commencing operations
`within the next several months.
`
`E Exhibit “K” attached hereto (emphasis added).
`
`Registrant’s Fifth Request For Extension of Time To File Statement of Use, filed
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`on or about October 2, 2003, states as follows:
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`Construction is underway in connection with one of the two restaurants t_o
`pe operated under
`the
`referenced mark.
`Applicant
`anticipates
`commencing operations within the next several months.
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`E Exhibit “L” attached hereto (emphasis added).
`
`In fact, Registrant did not file its Statement of Use until January 23, 2004 (gt;
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`Exhibit “M” attached hereto) — over seven years after it stated that the original steakhouse
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`

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`restaurant had ceased business in Argentina. Registrant’s Statement of Use asserts a
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`September 14, 2003 date of first use of Registrant’s Mark in connection with the identified
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`services, even though the “restaurant and bar services” are apparently provided only in Buenos
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`Aires, Argentina and not anywhere in the Untied States. 3 Exhibit “H” attached hereto. Based
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`on the Statement of Use, Orient—Express obtained the subject Registration for “LA CABANA”
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`on June 8, 2004.
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`Registrant contends that Petitioner did not use the “CABANA” Mark at the time it
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`filed its application, and it thus lacks standing. At the time Petitioner’s application was filed,
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`however, it is beyond dispute that Petitioner was using the “CABANA” Mark through a “related
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`company” (i.e. TCAW). Registrant further disputes whether its mark is likely to cause
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`confusion. But as shown below, the dominant portions of the marks are identical, the services
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`offered are closely related, and the channels of trade are not differentiated, so that confusion is
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`likely. Petitioner’s date of first use of “CABANA” in connection with “hotel services” precedes
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`both Registrant’s first use of “LA CABANA” in connection with “restaurant and bar services”
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`and the filing date of the Orient—Express Application. Thus, there is no material issue of fact left
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`for trial, and this Motion must be granted under Section 2(d) of the Lanham Act, 15 U.S.C.
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`§ 1052(d), especially because Petitioner is the senior user of the mark.
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`The deadline for filing summary judgment motions is currently August 24, 2007,
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`as the 30-day testimony period for Petitioner is currently set to open on August 27, 2007.
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`III.
`
`ARGUMENT.
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`A.
`
`The A licable Standard For Summar
`
`ud ment.
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`Summary judgment is an appropriate method for disposing of cases in which there
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`are no genuine issues of material fact in dispute, thus leaving the case to be resolved as a matter
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`of law. See Fed. R. Civ. P. 56(c). The purpose of summary judgment is to avoid an unnecessary
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`

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`trial where additional evidence would not reasonably be expected to change the outcome.
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`_S_e§ Pure Gold, Inc. v. Syntex gU.S.A. ), Inc., 739 F.2d 624, 222 USPQ 741 (Fed. Cir. 1984).
`
`Petitioner, as the party moving for summary judgment, has the burden of demonstrating the
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`absence of any genuine issue of material fact and that it is entitled to summary judgment as a
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`matter of law. Q; Celotex Com. v. Catrett, 477 U.S. 317 (1986); and Sweats Fashions Inc. v.
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`Pannill Knitting Co. Inc., 833 F.2d 1560, 4 USPQ2d 1793 (Fed. Cir. 1987). However, the
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`nonmoving party may not rest on mere denials or conclusory assertions, but rather must proffer
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`countering evidence, by affidavit or as otherwise provided in Fed. R. Civ. P. 56, showing that
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`there is a genuine factual dispute for trial. §e_e TBMP § 528.01 at 500-341 (2d ed. Rev. 3/ 12/04).
`
`B.
`
`Petitioner Has Standing To Petition to Cancel the
`Orient-Express Registration.
`
`“Standing is a threshold inquiry directed solely to establishing a plaintiff’s interest
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`in the proceeding. The purpose in requiring standing is to prevent litigation where there is no
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`real controversy between the parties, i.e. where a plaintiff is no more than a mere intermeddler.”
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`Harjo v. Pro Football Inc., 30 USPQ 2d 1828, 1830 (TTAB 1994).
`
`The continuing pronouncements of the Federal Circuit leave us with the
`understanding that there is a low threshold for a plaintiff to go from being
`a mere intermeddler to one with an interest in the proceeding. The Court
`has stated that an opposer need only show “a personal
`interest in the
`outcome of the case beyond that of the general public.”
`[Citations
`omitted] Once this threshold has been crossed, the opposer may rely on
`any ground that negates applicant's right to the registration sought.
`
`Estate of Biro v. Bic Corp., 18 USPQ 2d 1382, 1385-86 (TTAB 1991). Q 3 McCarthy on
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`Trademarks and Unfair Competition, § 20:46 at 29-93 (4‘h ed. 2007) (“Thus, standing to cancel is
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`placed on the same basis and criteria as standing to oppose.”).
`
`Clearly, Petitioner has standing to cancel the Orient-Express Registration because
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`Petitioner is being damaged and will likely continue to be damaged by the Registration. In
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`

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`particular, Petitioner has been damaged because action on Petitioner’s Application has been
`suspended in light of the Orient—Express Registration. S53 Exhibit “N” attached hereto.
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`Additionally, Petitioner has been and may continue to be precluded from registering
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`“CABANA” in connection with Petitioner’s other goods or services because of the Registration.
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`Registrant apparently disputes Petitioner’s standing on the grounds that it was not
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`using the “CABANA” Mark at the time Petitioner’s Application was filed in the Office, on
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`February 7, 2005. However, as shown above and by the attached exhibits, it is indisputable that
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`Petitioner VOP LLC (Venture Out Properties, LLC) was at that time the sole member of TCAW
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`(The Cabana at Waikiki, LLC), having acquired the membership interest in TCAW from VO
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`(Venture Out), pursuant to the Assets Acquisition Agreement, dated October 30, 2004
`
`(Exhibit “E”) and the Assignment of Membership Interest In The Cabana at Waikiki, LLC, a
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`Hawaii Limited Liability Company, dated October 31, 2004 (Exhibit “F”).
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`Moreover, it is indisputable that TCAW held all rights, title, and interest in and to
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`the mark “CABANA”, pursuant to the Operating Agreement for The Cabana at Waikiki, LLC,
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`dated May 1, 2004, and the attached Exhibit A, by which VO contributed to the capital of
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`TCAW, these and other assets related to the hotel with which the mark was being used. _S_ge
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`Exhibit “D” attached hereto. Clearly, Petitioner was using, through a “related company” (i.e.
`
`TCAW), the “CABANA” Mark in connection with “hotel services” as of the February 2005
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`filing date, and it thus has standing to cancel the Orient—Express Registration.
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`C.
`
`Petitioner Has Clear Priority of Use.
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`Petitioner (through its predecessor-in-interest) first used its “CABANA” Mark at
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`least as early as May 1999. fie; FitzGerald Dec. at ‘H 2, and Exhibits “A” — “C” attached hereto.
`
`Registrant first began using its “LA CABANA” Mark on September 14, 2003, according to its
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`Statement of Use. §_e§ Exhibit “M” attached hereto. Petitioner’s 1999 actual use of the
`
`

`
`“CABANA” Mark precedes the Orient—Express September 14, 2003 first date of actual use of
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`“LA CABANA”. Thus, it is indisputable that Petitioner has priority of use.
`
`D.
`
`The Registration For “LA CABANA” Must Be Cancelled
`Under Section 2(d) As the Dominant Part of The Mark Is
`Identical To Petitioner’s “CABANA” Mark.
`
`The Orient-Express Registration must be cancelled under Section 2(d) of the
`
`Lanham Act because it is for a mark that so resembles Petitioner’s “CABANA” Mark, that it is
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`likely to cause confusion when applied to its services. _Sie Safety-Kleen Corp. V. Dresser Indus.,
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`l1;<_:_., 518 F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975). An analysis of the key factors
`
`to consider in determining whether there is a likelihood of confusion, as enunciated in In Re E.I.
`
`DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973) (“Q_1_1f_(_>_nt”), weighs
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`heavily in favor of a finding that Registrant’s Mark presents a likelihood of confusion.
`
`In testing for likelihood of confusion under Sec. 2(d),
`following, when of record, must be considered:
`
`therefore,
`
`the
`
`(1)
`
`(2)
`
`(3)
`
`(4)
`
`(5)
`(6)
`(7)
`(8)
`
`(9)
`
`(10)
`
`The similarity or dissimilarity of the marks in their entireties as to
`appearance, sound, connotation and commercial impression.
`The similarity or dissimilarity and nature of the goods or services
`as described in an application or registration or in connection with
`which a prior mark is in use.
`The similarity or dissimilarity of established,
`trade channels.
`
`likely-to-continue
`
`The conditions under which and buyers to whom sales are made,
`i. e. “impulse” vs. careful, sophisticated purchasing.
`The fame of the prior mark (sales, advertising, length of use).
`The number and nature of similar marks in use on similar goods.
`The nature and extent of any actual confusion.
`The length of time during and conditions under which there has
`been concurrent use without evidence of actual confusion.
`
`The variety of goods on which a mark is or is not used (house
`mark, “family” mark, product mark).
`The market interface between Registrant and the owner of a prior
`mark:
`
`(a) a mere “consent” to register or use.
`(b) agreement provisions designed to preclude confusion,
`limitations on continued use of the marks by each party.
`
`i. e.
`
`

`
`(c) assignment of mark, application, registration and good will of
`the related business.
`
`((1) laches and estoppel attributable to owner of prior mark and
`indicative of lack of confusion.
`
`(11)
`
`(12)
`
`The extent to which Registrant has a right to exclude others from
`use of its mark on its goods.
`The extent of potential confusion,
`substantial.
`
`i. e., whether de minimis or
`
`(13) Any other established fact probative of the effect of use. Where
`the Patent Office follows such process, it is not abandoning its duty
`under Sec. 2(d) or allowing individuals to take the law into their
`own hands. Consideration of evidence emanating from the only
`place where confusion can occur,
`i. e.
`the marketplace,
`is not
`related to who decides but to the process of deciding.
`
`SQ DuPont, 476 F.2d at 1361
`
`There is no genuine issue with regard to the similarity of the marks, based on a
`
`comparison of the marks in terms of similarities as to appearance, source, connotation and
`
`commercial impression. TMEP § 1207.01(b) (4th Ed. Rev. 4/05). As the Examining Attorney
`
`stated in the Office Action in Petitioner’s Application ($6; Exhibit “N” attached hereto), it is
`
`apparent that Petitioner’s “CABANA” Mark and Registrant’s “LA CABANA” Mark are
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`confusingly similar based on the following _ factors which are the most relevant in this
`
`case: similarity of the marks, similarity of the goods and/or services, and similarity of trade
`
`channels.
`
`With regard to the similarity of the marks, the marks are to be compared for
`
`similarities in sound, appearance, meaning or connotation. DuPont supra at 476 F.2d at 1361,
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`177 USPQ at 567. Similarity in any one of these elements may be sufficient to find a likelihood
`
`of confusion. In Re White Swan Ltd., 8 USPQ 2d 1534, 1536 (TTAB 1988); In Re Lamson Oil
`
`_C_<;, 6 USPQ2d 1041, 1043 (TTAB 1987).
`
`In this case, Registrant’s “LA CABANA” Mark is identical to Petitioner’s
`
`previously used “CABANA” Mark, except for the term, “LA”, in Registrant’s Mark. However,
`
`

`
`“LA” is merely peripheral additional matter that does not create a difference between the marks,
`
`the dominant portions of which — “CABANA” — are identical. For instance, in Henry Siegel Co.
`
`v. M&R International Mfg. Co., 4 USPQ2d 1154 (TTAB 1987), the term “LA.” in the mark
`
`“L.A. CHIC” did not distinguish that mark from the mark “CHIC”. Accordingly, the Board
`
`granted the petition to cancel the junior user’s registration for “L.A. CHIC” on the grounds of
`
`likelihood of confusion with the senior user’s mark “CHIC”, both for women’s clothing, because
`
`“L.A. CHIC” might be viewed as a variation of “CHIC” used to designate a line of clothing.
`
`The term “LA” is generally viewed as a foreign article or preposition, equivalent
`
`to “the” when combined with other terms, and so it is unnecessary to provide a translation of
`
`“LA” under 37 CFR § 2.61(b).
`
`_S;e_e_: TMEP § 809 (4th Ed. Rev. 4/05) (“It is generally
`
`unnecessary to provide a translation of foreign articles or prepositions, such as ‘de,’ ‘le,’ ‘la’ or
`
`‘il,’ when combined with English terms, because their meaning is generally understood and, in
`
`this context, they are being used to convey an impression different from their foreign meaning”).
`
`In this case, “LA” is combined with “CABANA”, which Orient—Express
`
`conceded, in its application serial no. 76/572,178, now registration 3,003,330, “has become
`
`anglicized and is found in English language dictionaries.” S_e§ Exhibit “O”, at p. 2, attached
`
`hereto. According to English language dictionaries, “CABANA” means “cabin”.
`
`_S_§_e Exhibit
`
`“P” attached hereto. Thus, the term “LA” is merely a foreign article which is as non-
`
`distinguishing as the English article, “the”, when used in combination with “CABANA”. E
`
`gg, In Re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997)
`
`(affirming examining attorney’s refusal to register “THE DELTA CAFE” for restaurant services
`
`because the dominant portion of applicant’s mark was deemed to be “DELTA” and it was
`
`10
`
`

`
`therefore likely to cause confusion with the registered mark “DELTA” for hotel, motel and
`
`restaurant services).
`
`It is the general rule that likelihood of confusion is not avoided between
`otherwise confusingly similar marks by adding or deleting a house mark
`or matter that
`is descriptive or suggestive of the named goods or
`services. Sometimes the rule is expressed in terms of the dominance of
`the common term. Therefore, if the dominant portion of both marks is
`the same,
`then confusion may be likely notwithstanding peripheral
`differences.
`
`gag TMEP § 1207.01(b)(iii) (4th Ed. Rev. 4/05).
`
`In view of the above, the dominant portion of Registrant’s “LA CABANA” Mark
`
`is “CABANA”, which is identical to Petitioner’s “CABANA” Mark. Accordingly, the similarity
`
`of the marks in terms of sound, appearance, meaning and connotation, weighs in favor of a
`
`finding of likely confusion.
`
`E.
`
`The Services of Petitioner And Registrant Are Sufficiently
`Related to Support a Finding of Likelihood of Confusion.
`
`Petitioner seeks registration of “CABANA” in connection with “hotel services” in
`
`International Class 43. The Orient-Express Registration for “LA CABANA” is for “restaurant
`
`and bar services” in International Class 42. Although the services are not identical, that is not
`
`dispositive of the issue of likelihood of confusion.
`
`The inguiry is whether the goods Ior services] are related, not identical.
`The issue is not whether the goods [or services] will be confused with
`each other, but rather whether the public will be confused about their
`source.
`It is sufficient that the goods or services of the Registrant and the
`registrant are so related that the circumstances surrounding their marketing
`are such that they are likely to be encountered by the same persons under
`circumstances that would give rise to the mistaken belief that
`they
`originate from the same source.
`
`TMEP § 1207.01(a)(i) (4“‘ Ed. Rev. 4/05) (emphasis added; citations omitted).
`
`Third—party registrations have probative value to the extent that they may serve to
`
`suggest that goods or services are of a type that may emanate from a single source. TMEP
`
`11
`
`

`
`§ 1207.01(d)(iii) (4th Ed. Rev. 4/05). §_e_e also In Re Infinit Broadcastin Co ., 60 USPQ2d
`
`1214, l2l7—18 (TTAB 2001). In this case, there are numerous third—party registrations for marks
`
`in connection with both “hotel services” and “restaurant and bar services”. §_e_e §_.g, Reg. No.
`
`3,169,019 for “FAIRFIELD INN & SUITES” for “hotel, restaurant, catering, bar and lounge
`
`services” (Exhibit “Q”); Reg. No. 3,130,934 for “RAMADA” (stylized letters) for “hotel, motel
`
`and restaurant services” (Exhibit “R”); Reg. No. 3,075,544 for “RENAISSANCE HOTELS &
`
`RESORTS” for “hotel services; restaurant, catering, bar and lounge services” (Exhibit “S”);
`
`Reg. No. 2,895,328 for “CROWNE PLAZA HOTELS & RESORTS” (and a design) for “hotel
`
`and restaurant services” (Exhibit “T”); Reg. No. 2,891,495 for “STARWOOD” for “hotel, motel,
`
`resort hotel and motor inn services, making hotel reservations for others; restaurant, bar and
`
`catering services” (Exhibit “U”); Reg. No. 2,731,433 for “HYATT” (and a design) for “hotel and
`
`resort hotel services, and restaurant services” (Exhibit “V”); and Reg. No. 2,504,099 for
`
`“MARRIOTT” (and a design) for “hotel, restaurant, catering, bar and lounge services”
`
`(Exhibit “W”). The combination of hotel services and restaurant and bar services in these
`
`registrations suggests that consumers believe such services originate from the same source and
`
`are thus related to one another.
`
`In fact, Registrant is a hotel company and the Orient—Express Registration is for
`
`restaurant services. Further, Registrant itself obtained two other registrations in connection with
`
`various services including both “hotel services” and “restaurant and bar services”.
`
`_S_§_e_ Reg. No.
`
`2,514,558 for “THE ULTIMATE TAKEOVER” for “hotel services, making hotel reservations
`
`for others, resort hotels, restaurant and catering services” (Exhibit “X”) and Reg. No. 2,146,899
`
`for “HOTEL CIPRLANI” for “hotel services, restaurant services of hotels owned or managed by
`
`the mark’s proprietor or an affiliate of the mark’s proprietor” (Exhibit “Y”). By applying for and
`
`12
`
`

`
`obtaining these registrations and the registration at issue herein, Registrant effectively admits
`
`that hotel services and restaurant and bar services are related, and is estopped from arguing to the
`
`contrary.
`
`F.
`
`The Channels of Trade Are Identical.
`
`On information and belief, the Orient—Express Registration for “LA CABANA”
`
`does not contain any restrictions as to channels of trade or purchasers. Petitioner’s application
`
`for “CABANA” also does not contain any such restrictions. E FitzGerald Dec. at ‘ll 17. Thus,
`
`the trade channels must be deemed to be those normal for the trade.
`
`§_e_e_: Kangol Ltd. v. Kanga
`
`ROOS U.S.A., 974 F.2d 161, 23 USPQ2d 1945 (Fed. Cir. 1992). Registrant cannot argue that
`
`the channels of trade for “restaurant and bar services” are different from the channels of trade for
`
`“hotel services”, especially in light of the fact that, as shown above, the services offered by
`
`Orient—Express are closely related to the services offered by Petitioner. In this case, therefore,
`
`the services of Petitioner and Registrant share the same channels of trade, further supporting a
`
`finding of a likelihood of confusion.
`
`In In re J .M. Originals Inc., 6 USPQ2d 1393 (TTAB 1987), the Trademark Trial
`
`and Appeal Board held that “if two marks for related goods or services share the same dominant
`
`feature and the marks, when viewed in their entireties, create similar overall commercial
`
`impressions, then confusion is likely.” In this case, therefore, the identity of the dominant
`
`portions of the marks, the relatedness of the services and the common channels of trade, compel
`
`a finding under Section 2(d) of a likelihood of confusion. Moreover, because Petitioner has clear
`
`priority of use, the Orient—Express Registration must be cancelled even if the likelihood of
`
`confusion is not overwhelming.
`
`Many courts have stated that when the issue of likelihood of confusion is
`in doubt, the question will be resolved in favor of the senior user. That
`
`13
`
`

`
`is, when the question is closely balanced, the rule of resolving doubt in
`favor of the senior user is a tie-breaker.
`
`S_ec_ 4 McCarthy on Trademarks and Unfair Competition, § 23:64 at 23-254 (4th ed. 2007).
`
`IV.
`
`CONCLUSION.
`
`For the foregoing reasons, Petitioner requests that its Motion be granted and that
`
`summary judgment be entered, cancelling the Orient-Express Registration No. 2,851,141 for
`
`“LA CABANA”.
`
`DATED: Honolulu, Hawaii, June 1, 2007.
`
`Respectfully submitted,
`
`/>xx< /H fl—\_..
`
`Martin E. Hsia, Reg. No. 32,471
`CADES SCHUTTE LLP
`
`A Limited Liability Law Partnership
`P.O. Box 939
`
`Honolulu, Hawaii 96808
`
`Tel: (808) 521-9200
`
`Attorney for Petitioner
`VENTURE OUT PROPERTIES, LLC
`
`

`
`IN THE UNITED STATES PATENT & TRADEMARK OFFICE
`
`BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
`
`VENTURE OUT PROPERTIES LLC,
`
`a California limited liability company,
`
`Petitioner,
`
`v.
`
`ORIENT-EXPRESS HOTELS INC.,
`
`a Delaware corporation,
`
`€\/%%%%\/§/%\/\J
`
`Registrant.
`______:___.__:_______________l
`
`Cancellation No. 92045620
`
`Registration No. 2,851,141
`
`DECLARATION OF G. LEE FITZGERALD; EXHIBITS “A” - “G”
`
`1.
`
`I am a Manager of Petitioner VENTURE OUT PROPERTIES, LLC
`
`(“Petitioner”), and by virtue of that position, have personal knowledge of the matters stated
`
`herein below unless otherwise stated or stated upon information and belief.
`
`2.
`
`On or about May 1999, Petitioner (through its predecessor-in-interest)
`
`acquired a hotel located at 2551 Cartwright Road, Honolulu, Hawaii, where it began to provide
`
`hotel services under the service mark “CABANA”.
`
`3.
`
`Petitioner and its related company have, for many years, advertised, sold,
`
`and provided hotel services under the service mark “CABANA” (the “Cabana Mark”) in the
`
`United States.
`
`4.
`
`Attached hereto as Exhibit “A” is a true and correct copy of the parking
`
`signage for the June (1999) grand opening for the hotel, referring to the “Cabana” grand opening.
`
`

`
`5.
`
`Attached hereto as Exhibit “B” is a true and correct copy of an
`
`advertisement from the classified section of the August 12, 1999 issue of the (San Francisco)
`
`Bay Area Reporter — advertising Petitioner’s hotel services under the Cabana Mark.
`
`6.
`
`Attached hereto as Exhibit “C” is a true and correct copy of a picture
`
`showing the “CABANA” Mark as it has appeared on the hotel since 1999 to the present.
`
`7.
`
`Since at least as early as 1999, Petitioner, and its related company, have
`
`had extensive, exclusive, and continued use of “CABANA” in connection with hotel services.
`
`8.
`
`The hotel was originally acquired in 1999 by Venture Out, a California
`
`corporation (“VO”).
`
`I was the president of V0.
`
`9.
`
`In or about May 2004, VO formed The Cabana at Waikiki, LLC, a Hawaii
`
`limited liability company (“TCAW”), whose sole member was VO.
`
`10.
`
`VO transferred the hotel and all related assets, including all of VO’s
`
`“intangible assets of the hotel and tour operations including the trade names ‘CABANA’ and
`
`‘CABANA AT WAIKIKI,’ all customer lists, databases, Contact information, policies,
`
`procedures, business trade secrets and goodwill”, to TCAW, pursuant to an Operating
`
`Agreement for the Cabana at Waikiki, LLC dated as of May 1, 2004.
`
`11.
`
`Attached hereto as Exhibit “D” is a true and correct copy of the Operating
`
`Agreement for The Cabana at Waikiki, LLC, dated May 1, 2004.
`
`12.
`
`In or about October 2004, the controlling interest in TCAW was sold and
`
`transferred by V0 to Petitioner VOP LLC, pursuant to an Assets Acquisition Agreement dated
`
`October 30, 2004, at Section 1.2.4 (defining the “Acquired Assets” to include “All of Seller’s
`
`

`
`membership interest in The Cabana at Waikiki, LLC a Hawaii limited liability company and all
`
`rights and obligations relating thereto”).
`
`13.
`
`Attached hereto as Exhibit “E” is a true and correct copy of the Assets
`
`Acquisition Agreement, dated October 30, 2004