Sheraton Corp. of America v. Sheffield Watch, Inc.

• Decision Date: 19 July 1973
• Docket Number: Patent Appeal No. 8919.
• Citation: 178 USPQ 468,480 F.2d 1400
• Parties: SHERATON CORPORATION OF AMERICA, Appellant, v. SHEFFIELD WATCH, INC., Appellee.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

178 USPQ 468, 480 F.2d 1400 (1973)

SHERATON CORPORATION OF AMERICA, Appellant, v. SHEFFIELD WATCH, INC., Appellee.

Patent Appeal No. 8919.

United States Court of Customs and Patent Appeals.

July 19, 1973.

Brumbaugh, Graves, Donohue & Raymond, New York City, attys. of record, for appellant. Richard G. Fuller, Jr., Joseph D. Garon, Russell H. Falconer, New York City, John A. Finken, Washington, D. C., of counsel.

George F. Long, III, New York City, atty. of record, for appellee.

Before MARKEY, Chief Judge, RICH, BALDWIN, LANE, Judges, and ALMOND, Senior Judge.

BALDWIN, Judge.

This appeal is from the decision of the Patent Office Trademark Trial and Appeal Board, 167 USPQ 248 (1970), dismissing appellant's opposition to registration of the mark SHERATON, for watches and clocks.¹ The mark as it appears in appellee's application is somewhat stylized:

Opposition is primarily based on use of appellant's marks SHERATON and what the board referred to as appellant's "S" mark, shown below:

The pertinent facts are succinctly and accurately discussed in the published board opinion, familiarity with which is assumed.

Opinion

In concluding that there would be no likelihood of confusion as to source, the board stated:

Opposer is principally engaged in rendering hotel, motel, and restaurant services in "SHERATON" hotels and motor inns. The many items of merchandise bearing the mark "SHERATON" are, for the most part, in-house items utilized by opposer in the operation of the hotel and motor inns, and would be generally encountered by the average person within the surroundings of the hotel or motor inn in which they are guests. And considering that the term "SHERATON" appears thereon in conjunction with the word "Hotels" or the notation "Hotels or Motor Inns", the association of "SHERATON", as used on these goods, would be with opposer\'s hotels and motor inns and not with the products, per se, as an indicia of origin therefor in the manner of a trademark. Likewise, persons encountering the few items sold within the hotels or by mail order or in the shops in lobbies of the hotels bearing the name "SHERATON" in the context described above will recognize these products for what they are, namely, identity or souvenir items serving primarily, if not merely, to advertise and promote "SHERATON" hotels and motor inns. Under these circumstances, if we were to take these persons outside of the controlled atmosphere of the "SHERATON" hotels and place them in different marketing and physical surroundings such as in the 5 and 10 cent stores in which applicant\'s watches are sold, it is not believed that they would be likely to assume that "SHERATON" watches sold in these stores originate with or are in some way associated with the "SHERATON" hotels and motor inns.

The board erroneously restricted its consideration of appellee's mark to the manner in which it is presently being marketed, i. e., in "5 and 10 cent stores." There is nothing in the appellee's application which would limit its methods of merchandising in any way, and, as appellant points out, channels of trade are subject to changes in course. See Norton Co. v. Bear Mfg. Co., 438 F.2d 620, 58 CCPA 981 (1971); Crown Industrial Products Co. v. Crown Central Petroleum Corp., 440 F.2d 446, 58 CCPA 1095 (1971). In fact, the type of watches on which appellee uses its mark seems eminently suitable for sale in the gift shops which appellant has established are to be found in many of its hotels. If the availability of such outlets results in a reasonable likelihood of confusion, then the appellant is entitled to prevail. Cf. Hilton Hotels Corp. v. Golden Gate Stores, Inc., 168 USPQ 475 (TTAB 1970).

The board dismissed appellant's...