Iberostar Hoteles Y Apartamentos, S.L.

This Opinion is not a
Precedent of the TTAB
Mailed: August 13, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Iberostar Hoteles Y Apartamentos, S.L.
_____
Serial No. 79385220
_____
Harris A. Wolin and Michael F. Sarney of Myers Wolin, LLC,
for Iberostar Hoteles Y Apartamentos, S.L..
Catherine Caycedo, Trademark Examining Attorney, Law Office 101,
Zachary Sparer, Managing Attorney.
_____
Before Larkin, Cohen, and Bradley, Administrative Trademark Judges.
Opinion by Cohen, Administrative Trademark Judge:
Applicant Iberostar Hoteles Y Apartamentos, S.L. seeks registration on the
Principal Register of the mark JOIA BY IBEROSTAR BEACHFRONT RESORTS
(BEACHFRONT RESORTS disclaimed) in standard characters for “services for
providing food and beverages; providing temporary accommodation; temporary
accommodation reservation services for travellers; hotel accommodation and
restaurant services” in International Class 43.1
1 Application Serial No. 79385220 was filed on November 15, 2023, seeking extension of
protection of International Registration No. 1766265 under Section 66(a) of the Trademark
Act, 15 U.S.C. § 1141f(a). The English translation of JOIA is “jewel.”
Citations to the prosecution file refer to the USPTO’s TRADEMARK STATUS & DOCUMENT

Serial No. 79385220
- 2 -
The Examining Attorney has refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used
in connection with the identified services, is likely to cause confusion, to cause
mistake, or to deceive because it resembles the marks shown in the following
registrations:
• (RESTAURANT AND BEACH CLUB
disclaimed) for “restaurant and bar services” in International Class 43;2 and
• JOIA BEACH in standard characters for “restaurant and bar services” in
International Class 43.3
When the refusal was made final, Applicant appealed and the appeal is fully
briefed.4 We have reviewed the evidence and arguments properly made of record,
although we do not necessarily address all of them in this opinion. For the reasons
explained below, we affirm the refusal to register.
RETRIEVAL (“TSDR”) system and identify the documents by title, date, and page in the
downloadable .pdf version. Citations to the briefs and other materials in the appeal record
refer to the Board’s TTABVUE online docket system.
2 Registration No. 7065027 issued May 30, 2023 on the Principal Register. According to the
registrant, “[t]he mark consists of the words, ‘joia beach’ in large lettering over the words,
‘restaurant ampersand beach club’ in smaller font and underneath that is a small single wave
line all in peach.” The color peach is claimed as a feature of the mark. The English translation
of JOIA is “jewel.”
3 Registration No. 7166753 issued on the Principal Register on September 19, 2023. The
English translation of JOIA is “jewel.”
4 4, 6-7 TTABVUE.

Serial No. 79385220
- 3 -
I. Evidentiary Matter
During prosecution of the application, Applicant argued that JOIA is suggestive
because it means “jewel,”5 but did not submit a dictionary definition until it submitted
it for the first time with its appeal brief. The Examining Attorney objected to this
evidence as untimely.6
The evidentiary record in an application should be complete prior to the filing of
an ex parte appeal to the Board. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); see
In re Midwest Gaming & Entm’t LLC, No. 85111552, 2013 WL 1442237, at *2 n.3
(TTAB 2013) (new evidence submitted with brief is “untimely and therefore not part
of the record for this case”). Notwithstanding, we may take judicial notice of
dictionary definitions retrieved from online sources when the definitions themselves
are derived from dictionaries that exist in printed form. See B.V.D. Licensing Corp.
v. Body Action Design, Inc., 846 F.2d 727, 728 (Fed. Cir. 1988); In re Cordua Rests.
LP, No. 85214191, 2014 WL 1390504, at *2 n.4 (TTAB 2014), aff’d, 823 F.3d 594 (Fed.
Cir. 2016).
We thus take judicial notice of the definition, submitted by Applicant, for “jewel,”
which is defined as “a valuable stone”; “a piece of jewelry”; and “someone or something
that is highly valued or admired.”7
5 February 24, 2025 Response to Office Action at TSDR 7 (“the English translation of the
term JOIA, … is ‘JEWEL’ … the term JOIA clearly renders the cited marks highly suggestive
….”).
6 6 TTABVUE 8.
7 BRITTANICA.COM, 4 TTABVUE 12

Serial No. 79385220
- 4 -
II. Likelihood of Confusion
As an initial matter, for purposes of our likelihood of confusion analysis, we will
focus on Registration No. 7166753 for the standard character mark JOIA BEACH for
“restaurant and bar services” in International Class 43 (the “753 Registration” or
“’753 Mark”) because it has the most points in common with the mark in the
Application. If we find a likelihood of confusion as to the ’753 mark, we need not
consider the mark and services in the other registration cited by the Examining
Attorney. See, e.g., Monster Energy Co. v. Lo, No. 91225050, 2023 WL 417620, at *6
(TTAB 2023); Sock It To Me, Inc. v. Fan, No. 91230554, 2020 WL 3027605, at *9
(TTAB 2020) (confining Section 2(d) analysis to most similar pleaded mark) (citing
N. Face Apparel Corp. v. Sanyang Indus. Co., No. 91187593, 2015 WL 6467820, at *7
(TTAB 2015)).
“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 [or] mistake, or to deceive.” In re Charger
Ventures LLC, 64 F.4th 1375, 1379 (Fed. Cir. 2023). Our determination of the
likelihood of confusion under Section 2(d) of the Trademark Act 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,
1361 (CCPA 1973) (“DuPont”); Charger Ventures, 64 F.4th at 1379. We consider each
DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg.
Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019).

Serial No. 79385220
- 5 -
In any likelihood of confusion analysis, different DuPont factors may play a
dominant role and some factors may not be relevant. Naterra Int’l, Inc. v. Bensalem,
92 F.4th 1113, 1116 (Fed. Cir. 2024) (citing Tiger Lily Ventures Ltd. v. Barclays Cap.
Inc., 35 F.4th 1352, 1362 (Fed. Cir. 2022)). In addition, varying weight may be
assigned to each factor depending on the evidence presented, and “any one of the
factors may control a particular case.” Id.; see also Charger Ventures, 64 F.4th at 1381.
Two key considerations are the similarities between the marks and the similarities
between the goods or services, which are addressed under the first two DuPont
factors. In re i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017) (quoting Herbko
Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1164-65 (Fed. Cir. 2002)). We discuss
the relevant factors below.
A. The Services, Trade Channels and Classes of Consumers
The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration...,” and the third
DuPont factor concerns the “similarity or dissimilarity of established, likely-to-
continue trade channels.” DuPont, 476 F.2d at 1361. We compare the services as they
are identified in the relevant registration and the application. In re Detroit Athletic
Co., 903 F.3d 1297, 1306 (Fed. Cir. 2018); Coach Servs., Inc. v. Triumph Learning
LLC, 668 F.3d 1356, 1369 (Fed. Cir. 2012).
Likelihood of confusion may be found as to each class in its entirety if it exists as
to any service in that class. Sabhnani v. Mirage Brands, LLC, No. 92068086, 2021
WL 6072822, at *9 n.17 (TTAB 2021) (citations omitted); see also Sage Therapeutics,

Serial No. 79385220
- 6 -
Inc. v. Sageforth Psych. Servs., LLC, No. 91270181, 2024 WL 1638376, at *8 n.41
(TTAB 2024) (“It is sufficient for a finding of likelihood of confusion if relatedness is
established for any item encompassed by the identification of goods or services within
a particular class in the application”).
Applicant’s Application includes “hotel accommodation and restaurant services”
and the ’753 Registration includes “restaurant and bar services.” The identifications,
on their face, are identical as they both include “restaurant services.” Therefore,
Applicant’s and Registrant’s services are identical in part, which Applicant does not
dispute.
Because the services are identical in part, we presume that the channels of trade
and classes of consumers for the identical services overlap. In re Viterra Inc., 671 F.3d
1358, 1362 (Fed. Cir. 2012) (even though there was no evidence regarding channels
of trade and classes of consumers, the Board was entitled to rely on this legal
presumption in determining likelihood of confusion); Am. Lebanese Syrian Associated
Charities Inc. v. Child Health Rsch. Inst., No. 91190361, 2011 WL 4090447, at *6
(TTAB 2011).
The identity of some of the services and their identical overlapping channels of
trade and classes of consumers not only weigh heavily in favor of finding a likelihood
of confusion but also reduce the degree of similarity between the marks necessary to
find a likelihood of confusion. Viterra, 671 F.3d at 1363; In re Mighty Leaf Tea, 601
F.3d 1342, 1348 (Fed Cir. 2010); Century 21 Real Estate Corp. v. Century Life of Am.,
970 F.2d 874, 877 (Fed. Cir. 1992) (“When marks would appear on virtually identical

Serial No. 79385220
- 7 -
goods or services, the degree of similarity necessary to support a conclusion of likely
confusion declines.”).
B. Strength or Weakness of the ’753 Mark
Before we compare the marks, we consider the strength or weakness of the ’753
Mark8 under the sixth DuPont factor which considers “[t]he number and nature of
similar marks in use on similar goods.” See DuPont, 476 F.2d at 1361. We do so
because a determination of the strength or weakness of this mark helps inform us as
to its scope of protection.
Applicant has submitted only one third-party use-based registration for the mark
“joya”9 (which is arguably a variant spelling of “joia”) for “restaurant services; bar
services” in International Class 43.10 One third-party registration incorporating the
word JOYA for restaurant services falls far short of demonstrating that JOIA is
conceptually weak under the sixth DuPont factor. See Sabhnani, 2021 WL 6072822,
at *13 n.20 (“[I]n Juice Generation, there were at least twenty-six relevant third-party
uses or registrations of record . . . and in Jack Wolfskin, there were at least fourteen.”)
8 The fifth DuPont factor considers the “fame [or strength] of the prior mark,” DuPont, 476
F.2d at 1361. Here, as is normally the case in ex parte proceedings, there is no evidence as to
fame or commercial strength particularly since the owner of the cited registration is not a
party to this proceeding and thus, cannot introduce evidence regarding its use of the cited
mark. See In re Mr. Recipe, No. 86040643, 2016 WL 1380730, at *2 (TTAB 2016); In re
Thomas, No. 78334625, 2006 WL 1258862, at *8 n.11 (TTAB 2006). The lack of evidence of
fame of Registrant’s mark does not make a likelihood of confusion less likely. Indeed, “it is
settled that the absence of such evidence is not particularly significant in the context of an
ex parte proceeding.” In re Davey Prods. Pty Ltd., No. 77029776, 2009 WL 2420527, at *7
(TTAB 2009). Thus, the fifth factor does not apply.
9 The English translation of JOYA is “jewel.”
10 Registration No. 6708304, February 24, 2025 Response to Office Action at TSDR 10-11.

Serial No. 79385220
- 8 -
(quoting In re Morinaga Nyugyo K. K., No. 86338392, 2016 WL 5219811, at *9 n.8
(TTAB 2016)). The single third-party registration Applicant introduced, “with no
evidence of the extent of their use in commerce, [does] not diminish the commercial
strength of [a mark]. ... The existence of [this] registration[ ] is not evidence of what
happens in the market place or that customers are familiar with them ....’” Sock It To
Me, 2020 WL 3027605, at *12 (internal quotation omitted); see also In re Embiid, No.
88202890, 2021 WL 2285576, at *16 (TTAB 2021) (quoting Tao Licensing, LLC v.
Bender Consulting Ltd., No. 92057132, 2017 WL 6336243, at *14 (TTAB 2017) (third-
party registrations, accompanied by “no evidence of the extent of the use of the marks
in commerce, do not diminish the commercial strength of” a mark)).
Applicant also submitted registrations for:
• JEWEL SUITE for “hotel services”;11
• CLASSIC JEWEL for a variety of services including “restaurant and
catering services”;12 and
• JEWEL BAKO for “restaurant services.”13
It is unclear if Applicant, in submitting these third-party registrations of marks
including the term “jewel,” is attempting to invoke the doctrine of foreign equivalents.
Applicant does not cite any cases in which the doctrine of foreign equivalents has
been applied to show that the registration of various JEWEL marks by third-parties
11 Registration No. 4742031, id. at 13-15.
12 Registration No. 6595735, id. at 16-17.
13 Registration No. 3022748, id. at 18-20.

Serial No. 79385220
- 9 -
should limit the protection to be accorded JOIA BEACH.14 The registered JEWEL
marks do not incorporate the term JOIA and thus, differ in overall appearance, sound
and connotation from JOIA. These registrations are of little or no probative value in
evaluating the conceptual weakness of the ’753 mark.
Applicant submitted third-party websites for JOIA HOTEL & LUXURY
APARTMENTS located in Italy;15 VILLA JOYA located in Portugal;16 JOIA HOTEL
in Brazil;17 JOIA in England;18 JOIA RESTAURANT in an unnamed location;19 and
JOIA RESTAURANT & LOUNGE in Boston, MA.20 Four of these six websites are in
foreign locations but are presented in English. See In re Well Living Lab Inc., No.
86440401, 2017 WL 2876809, at *4 n.10 (“We evaluate the probative value of foreign
information sources on a case-by-case basis. ... Various factors may inform the
probative value of a foreign website in any given case, such as whether the website is
in English (or has an optional English language version), and whether the nature of
14 “In certain circumstances, however, the Board has applied the doctrine of foreign
equivalents when considering two marks from different foreign languages or from the same
foreign language.” August Storck KG v. Florend Indústria e Comércio de Chocolates LTDA,
No. 91277224, 2025 WL 4107480, at *7 (TTAB 2025) (citing Miguel Torres S.A. v. Casa
Vinicola Gerardo Cesari S.R.L., No. 91099024, 1998 WL 1021751 (TTAB 1998) and In re Lar
Mor Int’l, Inc., No. 73256334, 1983 WL 51840 (TTAB 1983)).
15 Id. at 22.
16 Id. at 23-27.
17 Id. at 28-29.
18 Id. at 30.
19 Id. at 31-32. The URL for these webpages includes “Harrison” which appears to be a
location indication. But, because there is no additional location information, it is unclear if
this is a location in the U.S. or elsewhere.
20 Id. at 33-44. While the webpages at TSDR 33-36 are different from the Facebook pages at
TSDR 37-44, the URL for TSDR 33-36 includes the term “Boston” indication that it is the
same location as the Facebook pages.

Serial No. 79385220
- 10 -
the goods or services makes it more or less likely that U.S. consumers will encounter
foreign websites in the field in question.”). JOIA HOTEL & LUXURY APARTMENTS
in Italy promotes hotel services which could conceivably appeal to U.S. consumers
traveling abroad; however, this website does not promote restaurant services.
VILLA JOYA in Portugal sometimes uses “HOME, RESTAURANT & SPA” in
connection with VILLA JOYA and the website lists “Michelin Restaurant” on one of
the webpages;21 JOIA HOTEL in Brazil lists “On-site Dining” on one of the
webpages;22 and JOIA appears to be a restaurant in London, England.23 These three
foreign websites could be relevant to a U.S. consumer traveling abroad.
Notwithstanding, the nature of the relevant restaurant services makes it likely that
U.S. consumers will discount these websites when looking for restaurants to dine in
locally. See, e.g., In re King Koil Licensing Co., No. 76565486, 2006 WL 639160, at *2
(TTAB 2006) (while consumers may visit foreign websites for informational purposes,
they are more likely to focus on local Internet retailers; impact of foreign websites
discounted).
Moreover, the record does not show the extent of U.S. consumer exposure to any
of the noted foreign websites. See In re Kysela Pere et Fils Ltd., No. 77686637, 2011
WL 1399224, at *3 n.9 (TTAB 2011) (no basis to conclude U.S. consumers exposed to
website for Australian brewery; those webpages not considered). We therefore
21 Id. at 27.
22 Id. at 28.
23 Id. at 30 (listing its address as 1 Electric Boulevard, London SW11 8BJ).

Serial No. 79385220
- 11 -
consider this evidence of foreign websites for whatever limited probative value it may
have.
Taken together, Applicant has provided one third-party registration for JOYA, one
(maybe two if we assume the unnamed location is in the U.S.) third-party websites
that are in the U.S., and three additional foreign third-party websites that display
marks with the term JOIA or JOYA in connection with restaurant services. While the
Federal Circuit has not held that any particular number of third-party uses is
required to show commercial weakness, we note that in the Apex Bank case, the
Federal Circuit commented that in Juice Generation, the court “refer[red] to 26 third-
party marks as ‘a considerable number,”’ Apex Bank, v. CC Serve Corp., 156 F.4th
1230, 1235 (Fed. Cir. 2025) (quoting Juice Generation, Inc. v. GS Enters. LLC, 794
F.3d 1334, 1337 n.1 (Fed. Cir. 2015)), and that in Jack Wolfskin, the court
“highlight[ed] fourteen ‘notable examples of third-party registration and
use.”’ Id. (quoting Jack Wolfskin, 797 F.3d at 1373 n.2).24 Obviously there can be no
bright-line number because the number of third-party uses necessary to show that
the relevant “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,” Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee en 1772, 396 F.3d 1369, 1374 (Fed. Cir. 2005), will depend
on the facts of each case, including the number of sellers in the United States market
24 In Apex Bank itself, the applicant made of record 51 uses of third-party marks. Apex Bank,
156 F.4th at 1235.

Serial No. 79385220
- 12 -
for the involved goods or services, and other factors. See generally Indus. Nucleonics
Corp. v. Hinde, 475 F.2d 1197, 1199 (CCPA 1973) (“Several other cases have been
cited as precedents to be followed. As we have said innumerable times, prior decisions
on other marks for other goods are of very little help one way or the other in cases of
this type. Each case must be decided on its own facts and the differences are often
subtle ones.”).
But here, as noted, there are at most one third-party registration for JOYA and
five potentially relevant third-party websites that display marks with the term JOIA
or JOYA. That number is well below the number of third-party uses in Juice
Generation and Jack Wolfskin. See also Sage Therapeutics, 2024 WL 1638376, at *12-
14 (16 relevant uses of third-party SAGE-formative marks for mental health services
in the form of screenshots of websites found “not sufficiently probative to contract the
scope of protection based on commercial weakness”); In re Hartz Hotel Servs. Inc., No.
76692673, 2012 WL 1193704, at *203 (TTAB 2012) (applicant offered 17 uses of
marks for hotel services containing the words “Grand/Grande Hotel”). In the context
of this case, we find that the one third-party registration of JOYA and five potentially
relevant third-party internet uses of the words JOIA or JOYA in connection with
restaurant services are not evidence that is “powerful on its face” in the manner of
the evidence in Juice Generation. Juice Generation, 794 F.3d at 1339.
That said, Applicant also argues that because JOIA is translated to mean jewel
and jewel means a “place that is highly valued or admired,”25 JOIA is suggestive or
25 4 TTABVUE 8; see BRITTANICA.COM, id. at 12.

Serial No. 79385220
- 13 -
laudatory.26 However, the ’753 Mark does not incorporate the term jewel, it
incorporates the term JOIA and there is no evidence that would suggest a consumer
would stop and translate JOIA to jewel. See Palm Bay Imps., 396 F.3d at 1377 (the
doctrine of foreign equivalents should be applied only when it is likely that the
ordinary American purchaser would stop and translate the word into its English
equivalent); In re Ye Mystic Krewe of Gasparilla, No. 90522364, 2025 WL 2953731, at
*6 n.15 (TTAB 2025) (quoting Cai v. Diamond Hong, Inc., 901 F.3d 1367, 1371 (Fed.
Cir. 2018) (internal quotation omitted) (“Attorney argument is no substitute for
evidence.”). Assuming a consumer would stop and translate JOIA to jewel, the
consumer encountering Registrant’s JOIA BEACH mark would have to engage in
some level of mental reasoning before arriving at Applicant’s asserted suggestive or
laudatory meaning and then ascribe that meaning to restaurant services rather than
to the term BEACH. Indeed, this exercise of mental reasoning is reflected by
registration of the ’753 Mark on the Principal Register without a claim of acquired
distinctiveness. Trademark Act Section 7(b), 15 U.S.C. § 1057(b) (mark registered on
Principal Register without a claim of acquired distinctiveness is presumed
distinctive). Heil Co. v. Tripleye GmbH, No. 91277359, 2024 WL 4925901, at *18
(TTAB 2024) (“Because Opposer’s mark is registered on the Principal Register, with
no claim of acquired distinctiveness under Section 2(f), we presume it is inherently
distinctive, i.e., that it is at worst suggestive of the goods.”).
26 Applicant asserts that the addition of matter to a “laudatory or suggestive word” may
distinguish a mark from another. Id. at 7.

Serial No. 79385220
- 14 -
Even if we characterized JOIA as being suggestive or laudatory and thus having
some inherent weakness, when considered with Applicant’s limited third-party
evidence, we are not persuaded that the scope of protection of Registrant’s mark,
registered on the Principal Register without a claim of acquired distinctiveness, has
been shown to be diminished. See Dollar Fin. Grp. v. Brittex Fin., Inc., 132 F.4th 1363,
1372 (Fed. Cir. 2025) (internal quotation omitted) (“[T]he fact that a mark may be
somewhat suggestive does not mean that it is a ‘weak’ mark entitled to a limited scope
of protection.”). And “[e]ven if [Registrant’s] marks are inherently weak, that is not
fatal to a finding of likelihood of confusion because even weak marks are entitled to
protection against confusion.” Made in Nature, 2022 WL 2188890, at *19; see 15
U.S.C. § 1057(b) (registration is “prima facie evidence of the validity of the registered
mark”).
The sixth DuPont factor is neutral and we accord the ’753 Registration “the normal
scope of protection to which inherently distinctive marks are entitled.” In re Info.
Builders Inc., No. 87753964, 2020 WL 2094122, at *10 (TTAB 2020); see Made in
Nature, 2022 WL 2188890, at *19.
C. Similarity of the Marks
“Under the first DuPont factor, we consider ‘the similarity or dissimilarity of the
marks in their entireties as to appearance, sound, connotation and commercial
impression.’” Sabhnani, 2021 WL 6072822, at *13 (quoting Palm Bay Imps., 396 F.2d
at 1371). “Similarity in any one of these elements may be sufficient to find the marks
confusingly similar.” In re Inn at St. John’s, LLC, No. 87075988, 2018 WL 2734893,

Serial No. 79385220
- 15 -
at *5 (TTAB 2018), aff’d 777 Fed. Appx. 516 (Fed. Cir. 2019) (quoting In re Davia, No.
85497617, 2014 WL 2531200, at *2 (TTAB 2014)). “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.” i.am.symbolic, 866 F.3d
at 1323 (quoting Coach Servs., 668 F.3d at 1368 (internal quotation marks omitted)).
We keep in mind that consumers must depend on their recollection of marks to which
they have previously been exposed and that their memories are fallible. See, e.g., In
re St. Helena Hosp., 774 F.3d 747, 751 (Fed. Cir. 2014); Sage Therapeutics, 2024 WL
1638376, at *5 (quoting In re i.am.symbolic, llc, No. 85916778, 2018 WL 3993582, at
*4 (TTAB 2018)).
“No element of a mark is ignored simply because it is less dominant, or would not
have trademark significance if used alone.” In re Electrolyte Labs. Inc., 929 F.2d 645,
647 (Fed. Cir. 1990) (citing Spice Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d
1293, 1295 (CCPA 1974)). On the other hand, “there is nothing improper in stating
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 Athl., 903 F.3d at 1305 (quoting In re Nat’l Data Corp., 753
F.2d 1056, 1058 (Fed. Cir. 1985)).
The Examining Attorney argues that Applicant’s and Registrant’s marks are
similar in sound and commercial impression because both begin with the dominant

Serial No. 79385220
- 16 -
term JOIA;27 the addition of Applicant’s house mark IBEROSTAR is not enough to
obviate a likelihood of confusion;28 and Applicant’s and Registrant’s marks contain
disclaimed, descriptive wording, such that JOIA is more dominant and likely to be
remembered by consumers.29
Applicant argues that “the common term JOIA is insufficient to support the
conclusion that the mark are confusingly similar in view of the weakness of that term
in connection with the subject services, and the inclusion of the distinctive term
IBEROSTAR in Applicant’s mark”;30 that it owns registrations for and including its
house mark IBEROSTAR;31 and that the Examining Attorney “improperly disregards
the distinctiveness of the term IBEROSTAR by simply dismissing it as an apparent
‘house mark.’”32 Applicant also argues that there are instances in which the addition
of a house mark to a registered mark is sufficient to avoid confusion.33 These
arguments are unavailing.
Both marks lead with the identical and dominant term JOIA. The marks’ “lead
words are their dominant portion and are likely to make the greatest impression on
consumers.” Detroit Athl., 903 F.3d at 1303; see also In re Dare Foods Inc., No.
27 6 TTABVUE 4.
28 Id. at 5.
29 Id. at 5-6.
30 4 TTABVUE 5.
31 Id.at 5-6.
32 7 TTABVUE 3.
33 Id.

Serial No. 79385220
- 17 -
88758625, 2022 WL 970319, at *6 (TTAB 2022). Contrary to Applicant’s arguments,34
if a portion of both marks is the same, then the marks may be confusingly similar
notwithstanding some differences. See, e.g., Charger Ventures, 64 F.4th at 1382 (“an
additional word or component may technically differentiate a mark but do little to
alleviate confusion”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1266
(Fed. Cir. 2002) (similar commercial impressions found even though applicant’s mark
PACKARD TECHNOLOGIES, with “TECHNOLOGIES” disclaimed, did not
incorporate every feature of opposer’s HEWLETT PACKARD marks). Inasmuch as
there is no evidence to the contrary or providing an alternative interpretation, the
marks used on in-part identical services also have the same meaning and commercial
impression.
While the addition of BY IBEROSTAR and the disclaimed BEACHFRONT
RESORTS may be points of difference in Applicant’s mark in sound when fully
articulated or in appearance, it does not alleviate confusion. Charger Ventures, 64
F.4th at 1382 (citing Detroit Athl., 903 F.3d at 1304-05). BEACHFRONT RESORTS
is disclaimed, which is an admission of descriptiveness by Applicant. See In re Zuma
Array Ltd., No. 79288888, 2022 WL 3282655, at *7 (TTAB 2022) (“Applicant
‘disclaimed exclusive rights in the term ‘Smart,’ thus conceding that ‘smart’ is merely
descriptive of electronic sensor modules.”) (citing In re Six Continents Ltd., No.
88430142, 2022 WL 407385, at *8 (TTAB 2022) (disclaimer of the word SUITES in
mark ATWELL SUITES “is a concession that ‘Suites’ is not inherently distinctive”)).
34 See, e.g., 4 TTABVUE 6.

Serial No. 79385220
- 18 -
Disclaimed matter that is descriptive of a party’s goods is typically less significant or
less dominant when comparing marks. Detroit Athl., 903 F.3d at 1305. The non-
source identifying nature of BEACHFRONT RESORTS and the disclaimer thereof
constitutes a rational reason for giving the term less weight in our analysis. Detroit
Athl., 903 F.3d at 1305.
Furthermore, it has long been established that the addition of a house mark to a
registered mark does not generally avoid confusion and is sometimes even found to
be an “aggravation and not a justification, for it is openly trading in the name of
another upon the reputation acquired by the device of the true proprietor.” Menendez
v. Holt, 128 U.S. 514, 521 (1888); see also In re Fiesta Palms LLC, No. 76595049, 2007
WL 950952, at *4 (TTAB 2007) (affirming refusal to register CLUB PALMS MVP
based on prior registration of MVP, finding consumers “likely to believe that the
CLUB PALMS MVP casino services is simply the now identified source of the
previously anonymous MVP casino services”); Nike Inc. v. WNBA Enters. LLC, No.
91160755, 2007 WL 763166, at *15 (TTAB 2007) (applying principle that “the
addition of a trade name or house mark or other such matter to one of two otherwise
similar marks will not serve to avoid a likelihood of confusion”). There are times,
typically in cases involving “highly suggestive” shared terms, where adding a house
mark to a registered mark may be sufficient to avoid confusion. “This is so because
the scope of protection afforded a highly suggestive term is somewhat less than that
given an arbitrary or distinctive mark so that a subsequent user may come closer to
a highly suggestive mark than to a strong mark without violating the rights of the
owner of said mark.” Melaro v. Pfizer, Inc., 1982 WL 50425, at *4 (TTAB 1982) (SILK

Serial No. 79385220
- 19 -
for cosmetics and toiletries versus SILKSTICK for cosmetics). However, as noted in
our analysis above, Applicant has not shown that JOIA is inherently weak or that
Registrant’s JOIA BEACH registration is entitled to less than a normal scope of
protection.
Simply put, the addition of BY IBEROSTAR to the shared term JOIA, along with
descriptive terms, does not avoid confusion. Consumers may view JOIA BY
IBEROSTAR BEACHFRONT RESORTS as identifying the source of the anonymous
JOIA BEACH services. It would also not be surprising if some consumers were to
believe JOIA BEACH to identify the original restaurant and that Applicant’s JOIA
BY IBEROSTAR BEACHFRONT RESORTS identifies an offshoot of the original in
the same chain of JOIA restaurants. The nature of Applicant’s restaurant services
also means that there will be circumstances when the source of the services is referred
to by shortening the marks to JOIA alone, particularly when verbalized. See In re Bay
State Brewing Co., Inc., No. 85826258, 2016 WL 1045677, at *3 (TTAB 2016) (“we
also keep in mind the penchant of consumers to shorten marks”); see also In re Dixie
Rests., Inc., 105 F.3d 1405, 1407 (Fed. Cir. 1997) (noting that restaurants are often
recommended by word of mouth and referred to orally).
Based upon the above analysis, when comparing the marks overall, they are
similar in sound, meaning, connotation and commercial impression. Their similarity
in sound is particularly significant given their use for restaurant services, as to
which shortened verbal uses of marks are prevalent in word-of-mouth
recommendations and references. On the whole, the first DuPont factor weighs in

Serial No. 79385220
- 20 -
favor of finding a likelihood of confusion. See Double Coin Holdings, 2019 WL
4877349, at *9.
D. Conclusion
Having considered all evidence and arguments bearing on the relevant DuPont
factors, we find that the in-part identical nature of the services weighs heavily in
favor of a conclusion of likelihood of confusion; and the similarity of the marks and
overlap in channels of trade and classes of customers also weigh in favor of a
conclusion of likelihood of confusion. The sixth factor regarding strength of the mark
in the cited registration is neutral. No factor supports Applicant’s position.
We conclude that confusion is likely.
Decision: The refusal to register Applicant’s proposed mark is affirmed under
Section 2(d), 15 U.S.C. § 1052(d).