LNMark, LLC v. Blue Ridge Hospitality Group, LLC

OCR transcription for search; preserved printed pages are authoritative

This Opinion is Not a
Precedent of the TTAB

Mailed: August 27, 2026
UNITED STATES PATENT AND TRADEMARK OFFICE

Trademark Trial and Appeal Board

LNMark, LLC
v.

Blue Ridge Hospitality Group, LLC

Opposition No. 91290447

Cynthia R. Smith, of Glade Voogt Lopez Smith Felser PC, and Andrew J. Felser, of
Felser PLLC, for LNMark, LLC.

Leo M Loughlin and Stephanie Waltersdorff, of Rothwell, Figg, Ernst & Manbeck,
P.C., for Blue Ridge Hospitality Group, LLC.

Before Wellington, Thurmon and Cohen, Administrative Trademark Judges.

Opinion by Thurmon, Administrative Trademark Judge:

Opposition No. 91290447
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Blue Ridge Hospitality Group, LLC (“Applicant”) seeks registration on the
Principal Register of the marks EARTHBORN SUITES,1 EARTHBORN INN,2
EARTHBORN COMMONS3 and EARTHBORN HOTELS,4 all for “Hotel
accommodation services; Motel services; Restaurant services,” in International Class
43. LNMark, LLC (“Opposer”) opposes registration of these marks under Section 2(d),
alleging priority and likelihood of confusion based on both registration and common
law rights in the marks listed below:
BORN for “Hotel services; restaurant, bar and catering services; bar and cocktail
lounge services; providing conference rooms; providing banquet and social
function facilities for special occasions; resort hotel services,” in International
Class 43;5
HOTEL BORN for “Hotel services; providing banquet and social function facilities
for special occasions; providing conference rooms; resort hotel services; restaurant,
bar and catering services; cocktail lounge services,” in International Class 43;6
and,
1 Application Serial No. 97757631 was filed on January 17, 2023, under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
The word “SUITES” is disclaimed.
2 Application Serial No. 97757634 was filed on January 17, 2023, under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
The word “INN” is disclaimed.
3 Application Serial No. 97757636 was filed on January 17, 2023, under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
The word “COMMONS” is disclaimed.
4 Application Serial No. 97757638 was filed on January 17, 2023, under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), alleging a bona fide intent to use the mark in commerce.
The word “HOTELS” is disclaimed.
5 Registration No. 5342208 issued November 21, 2017. The mark is presented in standard
characters.
6 Registration No. 5536386 issued August 7, 2018. The mark is presented in standard
characters, and the word “HOTEL” is disclaimed.

Opposition No. 91290447
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BORN MOUNTAIN CLUB for “Real estate development; real estate development
and construction of residential property,” in International Class 37.7
Applicant denies Opposer’s Section 2(d) claims and counterclaims for cancellation
of Opposer’s registrations of the BORN and HOTEL BORN marks based on alleged
abandonment under Sections 14(3) and 45 of the Act. Opposer denies that it
abandoned these two marks, but admits that it ceased use of both marks in 2023, and
had not yet resumed use of either mark in commerce by the time of the trial in this
case.
The case is fully briefed and ready for final decision. We consider first Applicant’s
abandonment claims, and we find that Opposer has abandoned the registered mark
HOTEL BORN for hotel and related services, but Opposer has not abandoned the
registered BORN mark for hotel and related services. The registration for the HOTEL
BORN mark must be cancelled and no common law rights in this mark survive the
abandonment.
That leaves Opposer with two registrations supporting its Section 2(d) claims: the
BORN registration for hotel and related services and the BORN MOUNTAIN CLUB
registration for real estate development services. We base our Section 2(d) analysis
on the registered BORN mark, as it is closer to the applied-for marks. O has proven
priority and a likelihood of confusion based on its BORN mark for hotel and related
services. See Sock It to Me, Inc. v. Fan, No. 91230554, 2020 TTAB LEXIS 201, at *20-
7 Registration No. 6195453 issued November 10, 2020. The mark is presented in standard
characters, and the word “CLUB” is disclaimed.

Opposition No. 91290447
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21 (confining Section 2(d) analysis to most similar pleaded mark); In re Max Cap.
Grp, No. 77186166, 2010 TTAB LEXIS 1, at *5 (same).
The record includes the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the files of the opposed Applications and the files of the two
challenged registrations. In addition, the parties submitted testimony and
documentary evidence.
We have carefully considered the entire record, and we identify probative evidence
within this decision, but we do not list all contents of the record here. See Quiktrip
W., Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1036 (Fed. Cir. 2021) (“We have held ‘on
multiple occasions that failure to explicitly discuss every issue or every piece of
evidence does not alone establish that the tribunal did not consider it.’”) (citation
omitted); In re Miracle Tuesday LLC, 695 F.3d 1339, 1348 (Fed. Cir. 2012) (“[T]he
mere fact that the Board did not recite all of the evidence it considered does not mean
the evidence was not, in fact, reviewed.”) (citation omitted).
I. Entitlement to a Statutory Cause of Action
Entitlement to a statutory cause of action must be established in every inter
partes case. Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d
1370, 1373 (Fed. Cir. 2020) (citing Lexmark Int’l, Inc. v. Static Control Components,
Inc., 572 U.S. 118, 125-26 n.4 (2014)). A party in the position of plaintiff may oppose
an application where such opposition is within the zone of interests protected by the
statute, 15 U.S.C. § 1063, and the opposer must have a reasonable belief in damage
that is proximately caused by registration of the mark. See Peterson v. Awshucks SC,

Opposition No. 91290447
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LLC, No. 92066957, 2020 TTAB LEXIS 520, at *17 (citing Corcamore, LLC v. SFM,
LL C, 978 F.3d 1298, 1303-04 (Fed. Cir. 2020)).
Opposer did not submit status and title records for the three registrations it
asserts, but the prosecution files for the BORN and HOTEL BORN registrations are
of record because of Applicant’s counterclaims to cancel those registrations.
Trademark Rule 2.122(d)(1), 37 C.F.R. § 2.122(d)(1). These registrations, though
challenged by Applicant, are sufficient to show Opposer’s entitlement to bring its
Section 2(d) claims based on the registered BORN and HOTEL BORN marks. Peters
Sportswear Co., Inc. v. Peter’s Bag Corp., 1975 TTAB LEXIS 91, at *1.
There are no documents in the record relating to the current status and title of
the BORN MOUNTAIN CLUB registration for real estate development. Applicant
submitted records from another application Opposer filed for the BORN MOUNTAIN
CLUB for hotel and other services, but no registration has issued based on that
application.8 There is, however, evidence (testimony and documents) showing
Opposer’s efforts to find investors and prospective customers for its planned BORN
MOUNTAIN CLUB resort.9 We find this evidence sufficient to support Opposer’s
common law claims under the BORN MOUNTAIN CLUB mark for real estate
development services. These rights support Opposer’s entitlement to bring its Section
2(d) claims based on the BORN MOUNTAIN CLUB mark.
8 16 TTABVUE 173-74.
9 7 TTABVUE 5-6 (testimony), 11-30 (promotional materials for the new resort).

Opposition No. 91290447
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Applicant has an entitlement to seek cancellation of Opposer’s two pleaded
registrations for the marks BORN and HOTEL BORN because those registrations
were asserted in this proceeding as a basis for Opposer’s claims against Applicant.
Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 1275-76 (Fed. Cir.
2014) (entitlement exists when the challenged registrations are a barrier to
registration); Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1376-77
(Fed. Cir. 2012) (same).
II. Applicant’s Abandonment Claims
To prevail on its abandonment counterclaims, Applicant must prove, by a
preponderance of the evidence, that Respondent (1) discontinued use of its marks;
and (2) had an intent not to resume use of the marks. 15 U.S.C. § 1127; Lewis Silkin
LLP v. Firebrand LLC, No. 92067378, 2018 TTAB LEXIS 436, at *11. The key facts
relating to Applicant’s abandonment claim are not in dispute. The legal significance
of those facts, however, is sharply disputed.
In 2017, Opposer opened the HOTEL BORN in Denver, Colorado.10 The marks
BORN and HOTEL BORN were used with this hotel until about May, 2023, following
the sale of the hotel in February, 2023.11 This hotel was the only location using the
BORN and HOTEL BORN marks, so all use of these marks by Opposer with hotel
and related services ceased in May, 2023 when the hotel was renamed. No new uses
10 21 TTABVUE 2.
11 7 TTABVUE 3-5 (showing uses of the BORN mark on the exterior of the building). During
a cross-examination deposition, Mr. Falcone confirmed that a sixty percent stake in the hotel
was sold in February, 2023 and that the name was changed to Limelight Denver by May,
2023.

Opposition No. 91290447
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of these marks began by the time of trial. Because Opposer stopped using these marks
with hotel services in 2023, the focus of our abandonment analysis is on the second
element. Applicant must prove that Opposer had an intent to not resume use of these
marks.
At the time the BORN hotel was sold, Opposer was developing a new resort it
intended to name the BORN MOUNTAIN CLUB.12 The work on this development
continues, but this new facility was not open by the time of the trial in this case. In
the latest testimony Opposer submitted, its witness testifies that the BORN
MOUNTAIN CLUB hotel and other services will be offered for the first time during
the second quarter of 2027.13 Opposer, therefore, has made no use of the BORN
MOUNTAIN CLUB mark with hotel and related services, and as a result, Opposer
has no common law rights in the mark in connection with hotel services. Opposer
registered the BORN MOUNTAIN CLUB mark in connection with real estate
development services, as we noted above, but its claim based on that mark is limited
to its common law rights. Two examples of such uses are provided below.
12 Id. at 2-3 (“We began accepting club membership deposits in 2023.”).
13 21 TTABVUE 3 (“We anticipate that the Born Mountain Club will open for business in the
second quarter of 2027.”).

Opposition No. 91290447

BORN

MTN CLUB

THIS RARE OPPORTUNITY AWAITS.

Join one of Colorado’s most award winning developers at Copper
Mountain for Born Mountain Club, a private non-equity social and

recreational club. Perfectly secluded, convenient, and with everything

you need. It’s the ultimate ski day without the chaos. Where first tracks

await. Welcome to the Born Mountain Club.

47 TTABVUE 11.
15 Td. at 13.

Opposition No. 91290447
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The preceding facts make it clear that Opposer was not leaving the hotel business
when it sold the BORN hotel in Denver in 2023. By the time that sale was completed,
Opposer was working on the BORN MOUNTAIN CLUB development, a new
mountain resort, as described in the promotional item provided above. There is no
question that Opposer intended to continue in the hotel and lodging business and
that it intended to use the BORN trademark in branding the new project. Opposer
even uses the word “Born” in many of the business names it uses internally.16
Opposer argues that the new BORN MOUNTAIN CLUB is a continuation or
extension of its use of the marks BORN and HOTEL BORN for hotel services.17 “It is
true that neither of the two marks BORN and HOTEL BORN – word for word – has
adorned a brick-and-mortar hotel façade since May 2023. But the law does not require
usage to continue unabated in the same manner – or under a [sic] identical brand
name, so long as an affiliation continues and the commercial impression remains the
same.”18 Applicant, on the other hand, argues that the new mark BORN MOUNTAIN
CLUB is not the same as the BORN or HOTEL BORN marks Opposer used with the
Denver hotel.19
The question before us is whether Opposer intended to not resume use of the
BORN and HOTEL BORN marks for hotel and related services. Applicant is correct
that the standard is strict for determining when a change to a mark constitutes
16 7 TTABVUE 5-6.
17 24 TTABVUE 8-10.
18 Id. at 8.
19 25 TTABVUE 6-7.

Opposition No. 91290447
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adoption of a new mark and abandonment of the old. For example, this Board
considered that issue in a precedential decision involving the marks GOT STRAPS
and GOT STRAPS? both for “online retail store services featuring straps for musical
instruments and accessories for musical instruments,” in International Class 35. In
re Guitar Straps Online, LLC, No. 85047191, 2012 TTAB LEXIS 287. The Board
found these marks did not create substantially the same commercial impression
because the addition of the question mark converted a declaration (got straps) into a
question (got straps?). Id. at *21.
So, if we were comparing uses of the BORN and HOTEL BORN marks on one
hand, with the BORN MOUNTAIN CLUB mark on the other hand, we might agree
with Applicant that the BORN MOUNTAIN CLUB mark does not create
substantially the same commercial impression as the marks Opposer used with the
hotel in Denver. But that is not the question before us. We must determine whether
Opposer had an intent to not resume use of the BORN and HOTEL BORN marks. We
look to the record to make this determination.
The marketing materials for the BORN MOUNTAIN CLUB resort show an intent
to feature the BORN mark in connection with the new resort. For example, the two
uses below both display the term BORN prominently such that it may be viewed
singular mark, and apart from the additional wording and design.

Opposition No. 91290447
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20 21
We further note that the words “mountain club” are somewhat descriptive of the
new resort. The marketing excerpt provided above describes the new development as
“a private non-equity social and recreational club.”22 With that in mind, we believe
the record shows that Opposer intends to use the BORN mark with the hotel services
provided at the new resort. Applicant has failed to prove abandonment of this mark.
We cannot find, however, any evidence showing an intent by Opposer to resume
use of the HOTEL BORN mark. There are no uses of this mark anywhere in the
materials for the new resort. The examples provided above are typical of the record
evidence. Because there is no evidence suggesting that Opposer intends to resume
use of the HOTEL BORN mark, we find that mark was abandoned.
Applicant also argues that Opposer ceased use of the BORN and HOTEL BORN
marks for more than three years invoking the statutory presumption of abandonment
based on three years of nonuse of the marks. 15 U.S.C. § 1127.23 The evidence shows
20 7 TTABVUE 12.
21 Id. at 31.
22 Id. at 13.
23 25 TTABVUE 5.

Opposition No. 91290447
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that Opposer stopped use of the marks in connection with hotels in May 2023.
According to Opposer, the BORN MOUNTAIN CLUB resort is expected to open in
2027, which will be more than three years after the cessation of use of the BORN and
HOTEL BORN marks. However, we do not rely on the statutory presumption of
abandonment because the three-year period ended during the briefing of this case.
Opposer cannot be expected to bring forth evidence and argument on a point that
arises so late in the course of the proceeding. Moreover, the statute only creates a
presumption that may be rebutted; and, as discussed, Opposer has demonstrated its
intent to resume use of the BORN mark for hotel services.
To conclude, we find that Opposer ceased use of the HOTEL BORN mark without
an intent to resume use of the mark. However, we find that Opposer has not
abandoned the BORN mark in connection with hotel services. Applicant’s
counterclaim to cancel the registration of BORN is denied and the counterclaim to
cancel the registration of HOTEL BORN is granted.
III. Law and Analysis – Section 2(d)
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), prohibits registration of a
mark that “[c]onsists of or comprises a mark which so resembles a mark registered in
the Patent or Trademark Office, or a mark or trade name previously used in the
United States by another and not abandoned, as to be likely, when used on or in
connection with the goods of the applicant, to cause confusion, or to cause mistake, or
to deceive.”

Opposition No. 91290447
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A. Priority
Opposer’s Section 2(d) claims rest on its registered BORN mark for hotel and
related services and on its common law rights in the BORN MOUNTAIN CLUB (or
BORN MTN CLUB) mark for real estate development services. As we noted above,
our analysis of Opposer’s Section 2(d) claims is focused on the registered BORN mark.
Opposer’s priority is not in dispute as to the services identified in the BORN
registration because Applicant’s challenge to that registration was rejected above.24
King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110-11
(CCPA 1974). Applicant does not contest Opposer’s priority.
B. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on a likelihood of confusion. In re E. I. DuPont
de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”), cited in B&B
Hardware, Inc. v. Hargis Indus., Inc., 575 U.S. 138 (2015); see also In re Majestic
Distilling Co., 315 F.3d 1311, 1314 (Fed. Cir. 2003). We must consider each DuPont
factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912
F.3d 1376, 1378-79 (Fed. Cir. 2019). “Whether a likelihood of confusion exists between
an applicant’s mark and a previously registered mark is determined on a case-by-case
basis, aided by application of the thirteen DuPont factors.” Omaha Steaks Int’l, Inc.
24 Opposer also asserted common law rights in the BORN mark, and it has established
priority as to those rights, too. Opposer’s testimony shows that it began use of the BORN
mark in 2017. The opposed applications were filed in 2023 based on an intent to use the
marks in commerce and Applicant submitted no evidence showing use of these marks.

Opposition No. 91290447
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v. Greater Omaha Packing Co., 908 F.3d 1315, 1318 (Fed. Cir. 2018). When analyzing
these factors, the overriding concerns are not only to prevent buyer confusion as to
the source of the goods or services, but also to protect the registrant from adverse
commercial impact due to use of a similar mark by a newcomer. See In re Shell Oil
Co., 992 F.2d 1204, 1208 (Fed. Cir. 1993).
“Each case must be decided on its own facts and the differences are often subtle
ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 1199 (CCPA 1973). Varying
weights may be assigned to each DuPont factor depending on the evidence presented.
See Citigroup Inc. v. Cap. City Bank Grp. Inc., 637 F.3d 1344, 1356 (Fed. Cir. 2011);
Shell Oil, 992 F.2d at 1206 (“the various evidentiary factors may play more or less
weighty roles in any particular determination”). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
similarities between the goods or services. See 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)); In re Chatam Int’l Inc., 380 F.3d 1340, 1342 (Fed.
Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103
(CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative
effect of differences in the essential characteristics of the goods and differences in the
marks.”).

Opposition No. 91290447
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1. Similarity of the Marks
To evaluate the similarity of the marks under the first DuPont factor, we consider
the marks in their entireties as to appearance, sound, connotation and commercial
impression. See, e.g., Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 1371 (citing DuPont, 476 F.2d at 1361). “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 TTAB LEXIS 170, at *13 (quoting In
re Davia, No. 85497617, 2014 TTAB LEXIS 214, at *4, aff’d mem., 777 F. App’x 516
(Fed. Cir. 2019); accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390 F.2d 728, 732
(CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone
is likely to cause confusion.”) (citation omitted).
“The proper test is not a side-by-side comparison of the marks, but instead
whether the marks are sufficiently similar in terms of their commercial impression
such that persons who encounter the marks would be likely to assume a connection
between the parties.” Coach Servs. Inc. v. Triumph Learning, LLC, 668 F.3d 1356,
1368 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser, who
normally “retains a general rather than a specific impression of marks.” In re
i.am.symbolic, llc, No. 85916778, 2018 TTAB LEXIS 281, at *11.
Opposer’s mark is BORN. Applicant’s marks are EARTHBORN SUITES,
EARTHBORN INN, EARTHBORN COMMONS and EARTBORN HOTELS. The
second word in each of the applied-for marks is either highly descriptive or generic
and has been disclaimed. While it is true that consumers will see the full marks, it is

Opposition No. 91290447
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also true that “in articulating reasons for reaching a conclusion on the issue of
confusion, 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.” In re Nat’l Data
Corp., 753 F.2d 1056, 1060 (Fed. Cir. 1985) (quoted by Detroit Athletic Co., 903 F.3d
at 1305).
The marks are somewhat similar in appearance. Each of the applied-for marks
has two words while Opposer’s mark has only one. The word “earthborn” contains the
word “born,” but the two words are visually distinct. There is some similarity in
appearance, but on balance, we do not believe the visual similarities in these marks
will cause a large increase in the likelihood of confusion.
While the marks do not sound alike, they share a similarity in the overlapping use
of the word “born.” But, as with the appearance of the marks, the word “earthborn”
does not sound like the word “born.” The added words in the applied-for marks might
not always be used by consumers, In re Bay State Brewing Co., No. 85826258, 2016
TTAB LEXIS 46, *9 (“[W]e also keep in mind the penchant of consumers to shorten
marks.”), but when used, these words are an additional difference in the sound of the
marks.
The marks have somewhat similar meanings. The Merriam-Webster online
dictionary defines born as “brought forth by or as if by birth.”25 The same dictionary
25 https://www.merriam-webster.com/dictionary/born (visited August 18, 2026). The Board
may take judicial notice of published definitions. Stratus Networks, Inc. v. UBTA-UBET

Opposition No. 91290447
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defines earthborn as “born on this earth: mortal.”26 Both terms include the concept of
birth or being brought forth, though the word “earthborn” connotes something that is
of or from the earth. While these meanings are not identical, both focus on the notion
of being born or brought forth from something. We find these meanings are similar
enough to increase the likelihood of confusion.
Consumers familiar with Opposer’s BORN mark may believe the applied-for
marks are an extension of Opposer’s business. Such consumers may see the move
from a hotel and resort using the BORN mark to similar properties using the mark
EARTHBORN (with descriptive added words) as a marketing shift that emphasizes
earth-friendly and sustainable practices. The risk of this type of confusion results
directly from the similarity of the marks and their related meanings.
In summary, the marks are bear some similarity in appearance and sound, and
are more similar in meaning. The related meanings and appearances of the marks
may lead consumers to view Applicant’s EARTHBORN marks as an extension of
Opposer’s BORN mark. The first DuPont factor is close but provides some support to
Opposer’s Section 2(d) claim.
2. Similarity of the Services, Trade Channels and Classes of Customers
The second, third and fourth DuPont factors consider the similarity of the services,
the trade channels and the relevant consumers’ likely level of care when purchasing
the services. Our analysis of these three factors is based on the services identified in
Commc’ns Inc., 955 F.3d 994, 996 (Fed. Cir. 2020) (“The Board relied on dictionary definitions
of the terms ‘stratus’ and ‘strata’ to evaluate similarities in the connotation of each mark.”).
26 https://www.merriam-webster.com/dictionary/earthborn (visited August 18, 2026).

Opposition No. 91290447
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Opposer’s registration for the BORN mark and in the opposed applications. See Stone
Lion Cap. Partners, LP v. Lion Cap. LLP, 746 F.3d 1317, 1323 (Fed. Cir. 2014);
Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 942 (Fed. Cir. 1990). It
is sufficient under the second DuPont factor if there is similarity or relatedness
between any of the services identified in BORN registration and in the opposed
applications. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 1336
(CCPA 1981); see also Double Coin Holdings Ltd. v. Tru Dev., No. 92063808, 2019
TTAB LEXIS 347, *18; In re Aquamar, Inc., No. 85861533, 2015 TTAB LEXIS 178,
*9 n.5.
The applications all identify the same services: “Hotel accommodation services;
Motel services; Restaurant services,” in International Class 43. Opposer’s
registration for the BORN mark includes “Hotel services,” among others. The services
are legally identical in part as “hotel accommodation services” are encompassed by
“hotel services.”
Because the services are identical in part and neither the applications nor the
cited registration contain any limitations on the hotel services, we must presume the
identical services travel through the same trade channels. In re Viterra Inc., 671 F.3d
1358, 1362 (Fed. Cir. 2012) (“it is well established that, ‘absent restrictions in the
application and registration, [identical] goods and services are presumed to travel in
the same channels of trade to the same class of purchasers’”) (quoting Hewlett-
Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1268 (Fed. Cir. 2002)). The third
DuPont factor also supports the Section 2(d) claims.

Opposition No. 91290447
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The fourth DuPont factor considers the classes of consumers who buy and use the
services. Applicant argues that consumers of the services are sophisticated and less
likely to be confused.27 We find no merit to this argument because neither the
applications nor the relied-upon registration have any limits on the nature of the
hotel services offered. While consumers considering a stay at an exclusive mountain
resort are likely to exercise additional care, Opposer’s registration for the BORN
mark is not limited to resort properties and identifies “hotel services” without
limitation. Given the wide range of hotels, we find that consumers of these services
are likely to exercise ordinary care. The fourth DuPont factor, therefore, is neutral.
3. Other DuPont Factors
Opposer listed all thirteen DuPont factors and made cursory arguments under
each. For example, Opposer argues that the “HOTEL BORN acquired some measure
of renown,”28 but that mark was abandoned. We have no basis to make findings under
the fifth DuPont factor as to the BORN mark, and therefore, we treat this factor as
neutral.
Opposer concedes that the sixth, seventh, eighth, ninth, and tenth DuPont factors
are neutral, and we agree.29 Opposer argues that the eleventh, twelfth and thirteenth
factors support its Section 2(d) claims, but there is no probative evidence under these
factors in the record. We find factors eleven, twelve and thirteen neutral.
27 23 TTABVUE 17-18.
28 22 TTABVUE 10 (citing testimony that the hotel was financially successful).
29 Id. at 11.

Opposition No. 91290447
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4. Conclusion – Weighing the Factors
The marks are only somewhat similar, but the services are identical in part and
the trade channels overlap. All other DuPont factors are neutral. “When marks would
appear on virtually identical goods or services, the degree of similarity necessary to
support a conclusion of likely confusion declines.” Century 21 Real Estate Corp. v.
Century Life of Am., 970 F.2d 874, 877 (Fed. Cir. 1992). With this premise in mind,
we find that the relevant DuPont factors support Opposer’s Section 2(d) claims.
Decision: The opposition is sustained as to all four applications. The cancellation
counterclaim is granted as to Registration No. 5536386 (HOTEL BORN). This
registration shall be cancelled in due course.