Grand Canyon West Ranch, LLC v. Hualapai Tribe

                            THIS OPINION
                      IS A PRECEDENT OF THE
                               T.T.A.B.

                                              Mailed:
                                              June 30, 2008
                                              jtw

       UNITED STATES PATENT AND TRADEMARK OFFICE
                              _____

               Trademark Trial and Appeal Board
                            ______

                 Grand Canyon West Ranch, LLC
                               v.
                        Hualapai Tribe
                             _____

                    Opposition No. 91162008
              to Application Serial No. 76484111
                       filed on 1/23/2003
                              _____

Eric R. Olsen and Joel Z. Schwarz of Gordon & Silver, Ltd.
for Grand Canyon West Ranch, LLC.

Michael F. Campillo and Joseph R. Meaney of Venable,
Campillo, Logan & Meaney, P.C. for the Hualapai Tribe.
                           ______

Before Walsh, Mermelstein and Wellington, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

     Grand Canyon West Ranch, LLC (opposer) has opposed the

application of the Hualapai Tribe (applicant) to register

the mark GRAND CANYON WEST in standard characters for

services now identified as:    “airport services; air

transportation services; arranging for recreational travel

tours and providing related transportation of passengers by

air, boat, raft, bus, and motorized on-road and off-road

vehicles.”   The Board ordered entry of this identification
Opposition No. 91162008


of services in an interlocutory decision in this case, a

decision we will discuss below.    See Grand Canyon West Ranch

LLC v. Hualapai Tribe, 

78 USPQ2d 1696

 (TTAB 2006).

     The GRAND CANYON WEST application is based on

applicant’s claim that the mark was first used in commerce

on February 14, 1988, under Trademark Act Section 1(a), 

15 U.S.C. § 1051

(a), and applicant’s claim that the mark has

acquired distinctiveness under Trademark Act Section 2(f),

15 U.S.C. § 1052

(f).

                          The Grounds

     As grounds for the opposition, opposer asserts that

applicant committed fraud “… by falsely stating that it had

used the GRAND CANYON WEST mark in connection with services

that neither it nor its licensee has provided” and that

applicant’s mark “… consists of matter which, when applied

to applicant’s services, is merely descriptive of

Applicant’s services in violation of 

15 U.S.C. §1052

(e), and

has not acquired distinctiveness or secondary meaning within

the meaning of 

15 U.S.C. §1052

(f).”     First Amended Notice of

Opposition at 4.   Applicant has denied the essential

allegations of the first amended notice of opposition.

                          The Record

     The record consists of the pleadings and the record

related to the opposed GRAND CANYON WEST application, as

well as witness testimony and notices of reliance filed by



                               2
Opposition No. 91162008


applicant, and notices of reliance filed by opposer.

Applicant’s five witnesses are all either persons hired by

applicant to manage its enterprise or tour operators which

provided services under agreements with applicant.      None of

applicant’s “principals” testified.       Neither party has

maintained objections to any evidence.

                              Standing

     Opposer has standing to bring this proceeding.      Opposer

asserts that it is using and that it has filed applications

to register the GRAND CANYON WEST RANCH mark, and

applicant’s witnesses confirm opposer’s use of GRAND CANYON

WEST RANCH.   See, e.g., Testimony of Allison Raskansky

(Raskansky) at 54.     Thus, the registration of applicant’s

mark could impact opposer’s ability to register or to

continue to use GRAND CANYON WEST RANCH.      Therefore, opposer

has established a real interest in this proceeding.      See

generally Jewelers Vigilance Committee Inc. v. Ullenberg

Corp., 

823 F.2d 490

, 

2 USPQ2d 2021, 2023

 (Fed. Cir. 1987).

                          Findings of Fact

     Applicant owns a large expanse of land on the west rim

of the Grand Canyon.      The area identified as the “west rim”

extends for 100 to 110 miles east from the point where the

Colorado River meets Lake Meade.      Testimony of Earl Jobson

(Jobson) at 15.   In 1986, applicant developed a plan to

establish a tourist destination at a specific site within



                                 3
Opposition No. 91162008


its property.   Applicant’s plans focused on bringing

tourists from Las Vegas and other places to applicant’s

“destination” to experience the Grand Canyon from a pristine

perspective and to experience Hualapai culture.      Testimony

of Judith Strand (Strand) at 14-16.      The site applicant

selected and eventually developed is about 115 miles east of

Las Vegas.   Jobson at 15.

     When applicant first implemented its plan in 1988,

applicant began to offer tours and other related services at

the selected destination or site on the western rim of the

Grand Canyon within applicant’s property.      Strand at 18-19.

     One of the chief features of the plan was the opening

of an air strip to provide air access to the destination,

and eventually, helicopter flights from the site into the

canyon.   The airstrip was completed in 1988 and Applicant

began bringing visitors to the site by both air and van on

February 14, 1988, a total of six visitors by van and seven

by airplane.    

Id.

   On that date, applicant identified the

air strip and the destination or site as GRAND CANYON WEST,

and applicant began to use the GRAND CANYON WEST mark to

identify the source of the services applicant offered at

this “destination.”     Id. at 25.    Initially, applicant

provided guided tours at GRAND CANYON WEST directed by

members of the Hualapai Tribe.       Shortly thereafter applicant

offered additional services, such as an Arizona-style



                                4
Opposition No. 91162008


barbeque.    Also, shortly after opening, applicant began to

use school buses to transport visitors during their tours of

the site.    Id. at 43.

     There is no evidence that prior to applicant’s adoption

of the GRAND CANYON WEST mark anyone else had used GRAND

CANYON WEST either to identify this particular destination

or site or for any other purpose.

     Applicant implemented its plan to establish GRAND

CANYON WEST as a tourist destination by enlisting tour

operators and others to provide transportation to the

destination.   From the outset, applicant has controlled

access to the site, among other means, by charging a fee for

each visitor to the site.    Id. at 57.

     The number of tour operators servicing the site and the

number of visitors to GRAND CANYON WEST increased steadily

from the opening to the present.    From the thirteen visitors

on the first day of operations in 1988, the numbers of

visitors grew to between 60 and 100 per day in three years.

Id. at 57.   By 1993, at least ten tour operators were

bringing visitors to GRAND CANYON WEST.     Id. at 69.   At this

time, one tour operator alone ran six to nine buses to the

site each day, each carrying between 40 to 50 visitors.      Id.

at 69-70.    By 1994, one tour operator was bringing

approximately 300 visitors per day to GRAND CANYON WEST by

airplane.    Raskansky at 10-11.   Helicopters began to land at



                               5
Opposition No. 91162008


GRAND CANYON WEST by 1995-96; these helicopters carried

visitors from the top of the canyon at GRAND CANYON WEST to

the canyon floor and the Colorado River.       Id. at 19-20.   In

recent years the numbers of visitors to GRAND CANYON WEST

have increased dramatically:     220,209 in 2003, 269,427 in

2004, 299,000 in 2005 and 334,874 in 2006.       Id. at 67-69.

     Applicant marketed its services through Las Vegas tour

operators and hotels, as well as directly to groups outside

the United States in countries including England, Korea,

Japan and China.    Strand at 20-22.    In the early 1990s,

applicant distributed between 60,000 and 100,000 “rack

cards” each year through one tour operator to advertise

tours to GRAND CANYON WEST.      Id. at 24.   Applicant also

operates a web site to promote its services under the GRAND

CANYON WEST mark.   Raskansky at 60-61.

     More recently, applicant developed a “Skywalk” which

opened in March 2007.     The Skywalk is a bridge-like

structure with a see-through glass deck and glass

railings/walls which extends for 70 feet over the canyon

from the canyon wall.     The Skywalk provides a view over the

Grand Canyon to the floor 4,000 feet below which is both

dramatic and unique.      The opening of the Skywalk resulted in

significant coverage of GRAND CANYON WEST in the media.

Stories about the Skywalk and about applicant’s activities

more generally referring to GRAND CANYON WEST have appeared



                                 6
Opposition No. 91162008


in numerous publications including The Arizona Republic, The

Las Vegas Sun, The Detroit Free Press, The Chicago Tribune,

USA Today, The New York Daily News, Jet (magazine), The

Miami Herald and The Los Angeles Times, among others.     See,

e.g., Applicant’s Second Notice of Reliance.

     Applicant also made of record articles featuring GRAND

CANYON WEST from publications outside the United States,

including Australia, New Zealand, Canada and the United

Kingdom.   While articles from foreign countries often lack

probative value in our proceedings, in this case we find the

articles probative because the record also establishes that

the potential customers for applicant’s services, that is,

visitors to GRAND CANYON WEST, often travel from foreign

countries to avail themselves of the services applicant

offers at GRAND CANYON WEST.     Id.

     By August 2007, applicant employed 300 people in the

operation of GRAND CANYON WEST and averaged 2,000 visitors

per day.   Raskansky at 70.   Numerous tour operators were

bringing visitors to GRAND CANYON WEST by air, bus, van and

other similar vehicles.   At the time of the opening of the

Skywalk, applicant was receiving 3 million hits (visitors)

per month on its web site.     Id. at 61.

     Opposer provides helicopter tours of the Grand Canyon

from a site designated as GRAND CANYON WEST RANCH.

Opposer’s base of operation is at a ranch which is located



                                7
Opposition No. 91162008


along the access road to applicant’s GRAND CANYON WEST site,

but not on applicant’s property.    Prior to applicant’s

adoption and use of the GRAND CANYON WEST mark, the site of

opposer’s operation was known as the Diamond Bar Ranch.

Opposer’s sign now includes references to both Diamond Bar

Ranch and GRAND CANYON WEST RANCH.    Id. at 52-54.   Applicant

argues that Opposer’s use of GRAND CANYON WEST RANCH causes

confusion and violates its rights.    Id. at 55.   However,

neither likelihood of confusion nor any alleged violation of

applicant’s rights is at issue in this proceeding; rather,

the only issues in this proceeding are opposer’s claims in

opposition to the registration of applicant’s mark.

                    The Descriptiveness Claim

     In the notice of opposition opposer asserts that GRAND

CANYON WEST is unregistrable under Trademark Act Section

2(e) without specifying whether Section 2(e)(1) or 2(e)(2)

applies.   In its brief applicant responds with alternative

arguments under both subsections.    Furthermore, opposer also

argues, in the alternative, that applicant failed to show

acquired distinctiveness under Trademark Act Section 2(f) as

to both.   Applicant has responded to the arguments under

both subsections.    Similar analysis applies to both Section

2(e)(1) and 2(e)(2), and we reach the same conclusion as to

both.   That is, we conclude that GRAND CANYON WEST is merely

descriptive and/or primarily geographically descriptive of



                                8
Opposition No. 91162008


applicant’s services.     However, we conclude that applicant’s

evidence of acquired distinctiveness is more than sufficient

and therefore, we dismiss opposer’s claims under Section

2(e).

     In a case such as this, where applicant amended the

application to seek registration based on a claim of

acquired distinctiveness under Section 2(f), we could treat

the lack of distinctiveness as an established fact and forgo

any discussion on that point.       See, e.g., Target Brands Inc.

v. Hughes, 

85 USPQ2d 1676

, 1679-80 (TTAB 2007).      However, in

this instance, we will address the arguments of the parties

regarding the descriptiveness of the mark for completeness

and to establish a foundation for our discussion of the

issue of acquired distinctiveness.

        First we consider whether GRAND CANYON WEST is merely

descriptive under Section 2(e)(1).      A term is merely

descriptive if it immediately describes a significant

quality, characteristic, function, feature or purpose of the

services with which it is used.      In re Gyulay, 

820 F.2d 1216

, 

3 USPQ2d 1009

 (Fed. Cir. 1987).      We must consider the

term at issue in the context in which it is used, not in the

abstract.     In re Abcor Development Corp., 

588 F.2d 811

, 

200 USPQ 215, 218

 (CCPA 1978); In re Remacle, 

66 USPQ2d 1222

,

1224 (TTAB 2002).     That is, we must assume that prospective

consumers will encounter the term in relation to the



                                9
Opposition No. 91162008


identified services and determine whether those consumers

will understand the term to convey information about the

services.   In re Tower Tech, Inc., 

64 USPQ2d 1314

, 1316-1317

(TTAB 2002); In re Patent & Trademark Services Inc., 

49 USPQ2d 1537

, 1539 (TTAB 1998); In re Home Builders

Association of Greenville, 

18 USPQ2d 1313

, 1317 (TTAB 1990);

In re American Greetings Corp., 226 UPSQ 365, 366 (TTAB

1985).

     Finally, in determining whether a mark is merely

descriptive, we must consider the mark in its entirety.

See Concurrent Technologies Inc. v. Concurrent Technologies

Corp., 

12 USPQ2d 1054

, 1057 (TTAB 1989).    In this regard,

applicant argues that the order of the words in this case,

that is, the placement of WEST after GRAND CANYON, negates

any descriptive meaning which might otherwise be inherent in

the component parts of the mark.

     The mark is GRAND CANYON WEST.   The services are

“airport services; air transportation services; arranging

for recreational travel tours and providing related

transportation of passengers by air, boat, raft, bus, and

motorized on-road and off-road vehicles.”

     For the record, GRAND CANYON is defined in the Merriam-

Webster’s Collegiate Dictionary (11th ed. 2003) under

“Geographical Names” as follows:   “Grand Canyon gorge of the

Colorado NW Ariz. extending from the mouth of the Little



                              10
Opposition No. 91162008


Colorado W to the Grand Wash Cliffs; over 1 mi (1.6 km)

deep; area largely within Grand Canyon National Park…”1

     Each of applicant’s witnesses and virtually all of the

publications applicant submitted either explicitly or

implicitly recognize the Grand Canyon as a natural wonder

and a popular tourist destination.     The record also

establishes beyond question that the west rim of the Grand

Canyon is the focus of applicant’s services.      That is, the

purpose of applicant’s airport, air transportation and other

transportation services is to bring visitors to the west rim

of the Grand Canyon to enjoy applicant’s recreational and

tour services featuring the wonders of the west rim of the

Grand Canyon.   Thus, GRAND CANYON describes the fundamental

purpose or object of the identified services, and WEST

simply identifies more precisely where along the Grand

Canyon applicant offers those services.     Accordingly, we

conclude that GRAND CANYON WEST is merely descriptive of

applicant’s services within the meaning of Section 2(e)(1).

We find unpersuasive applicant’s argument that the placement

of WEST after GRAND CANYON in the mark alters the

descriptive character of the mark.




1
  The Board may take judicial notice of dictionary definitions.
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 

213 USPQ 594

 (TTAB 1982), aff'd, 

703 F.2d 1372

, 

217 USPQ 505

 (Fed. Cir. 1983).



                               11
Opposition No. 91162008


     We now turn to consideration of GRAND CANYON WEST under

Section 2(e)(2).    To determine whether GRAND CANYON WEST is

primarily geographically descriptive of applicant’s services

we must determine:    (1) whether the primary significance of

the mark is as the name of a place which is generally known;

and (2) whether relevant purchasers would associate the

services of applicant with the place named, that is, whether

the public would believe that the services come from the

place named.   In re Societe Generale des Eaux Minerales de

Vittel S.A., 

824 F.2d 957

, 

3 USPQ2d 1450, 1452

 (Fed. Cir.

1987); In re JT Tobacconists, 

59 USPQ2d 1080

, 1081 (TTAB

2001); In re California Pizza Kitchen Inc., 

10 USPQ2d 1704

,

1705 (TTAB 1988).    The two questions are bound together,

that is, there can be no services-place association if the

place named is so obscure or remote that purchasers of the

service at issue would not recognize it as a place.     Vittel,

3 USPQ2d at 1452

.

     We have already concluded based on this record that the

Grand Canyon is a place that is generally known and not

obscure.   See also In re Spirits of New Merced LLC, 

85 USPQ2d 1614

 (TTAB 2007) (YOSEMITE BEER held primarily

geographically descriptive for beer).    Furthermore, based on

the record before us, we also conclude without hesitation

that relevant consumers would associate applicant’s services

with the Grand Canyon.    See In re U.S. Cargo Inc., 49 USPQ2D



                               12
Opposition No. 91162008


1702 (TTAB 1998) (U.S. CARGO held primarily geographically

descriptive for towable trailers carrying cargo and vehicles

and for commercial purposes); In re Chalk's Int’l Airlines

Inc., 

21 USPQ2d 1637

 (TTAB 1991) (PARADISE ISLAND AIRLINES

held primarily geographically descriptive for transportation

of goods/passengers by air).    As we have already stated, the

Grand Canyon is the entire focus of applicant’s services.

In fact, applicant’s services would serve no purpose but for

their location at the Grand Canyon.

     In this context as well, we again reject applicant’s

argument that the placement of WEST after GRAND CANYON in

the mark in any way alters its character.    In re Joint-Stock

Co. “Baik”, 

80 USPQ2d 1305

 (TTAB 2006) (BAIKAL portion of

“BAIKALSKAYA” mark for vodka is name of place known

generally to public, since Lake Baikal is not remote or

obscure place; BAIKALSKAYA, adjectival form of geographical

term, likewise geographical).    In fact, WEST enhances the

geographically descriptive significance of the mark by

providing further specificity to the geographical place

indicated by the mark.

     In particular, we have carefully considered applicant’s

arguments that its mark is not primarily geographically

descriptive based on In re Pebble Beach Co., 

19 USPQ2d 1687

(TTAB 1991) (17 MILE DRIVE held not primarily geographically

descriptive of tee-shirt, sweatshirts, paper napkins,



                                13
Opposition No. 91162008


ceramic mugs, canvas tote bags, and recreation services,

namely, providing facilities for picnicking and

sightseeing).   Applicant argues that, as in the Pebble Beach

case, applicant coined the term GRAND CANYON WEST.

Applicant also argues that it owns and controls access to

the site associated with GRAND CANYON WEST, as in the Pebble

Beach case.   In fact, we conclude that the record supports

applicant’s position on both points.    However, there is a

fundamental difference between the mark at issue here and

the mark in the Pebble Beach case.     Unlike the mark 17 MILE

DRIVE, GRAND CANYON WEST consists of two terms GRAND CANYON

and WEST which had geographical significance before

applicant adopted the mark.   Although applicant “coined” the

composite GRAND CANYON WEST in the sense that applicant was

the first to use the term, nevertheless, the composite, from

its inception, described a geographical place.    Furthermore,

the fact that applicant uses GRAND CANYON WEST to identify a

property which it owns and controls does not, by itself,

remove it from the category of those terms which are

“primarily geographically descriptive” under Section

2(e)(2).   Accordingly, we conclude that GRAND CANYON WEST is

primarily geographically descriptive of applicant’s services

under Trademark Act Section 2(e)(2).

     This conclusion is by no means the end of our inquiry

regarding opposer’s claims under Section 2(e) of the Act.



                              14
Opposition No. 91162008


Applicant asserts, in the alternative, that GRAND CANYON

WEST has acquired distinctiveness under Section 2(f).

Opposer, on the other hand, also argues, in the alternative,

that applicant has failed to establish acquired

distinctiveness.    As we noted above, we agree with

applicant.

     In an opposition proceeding, opposer has the initial

burden to present prima facie evidence or argument upon

which we could reasonably conclude that applicant’s mark has

not acquired distinctiveness.        Yamaha Intl. Corp. v. Hoshino

Gakki Co. Ltd., 

840 F.2d 1572

, 

6 USPQ2d 1001, 1004-1008

(Fed. Cir. 1988).    If opposer does so, the burden of proof

shifts to applicant to prove by a preponderance of the

evidence that the mark has acquired distinctiveness.        

Id.

     In this case opposer has argued that the mark is merely

descriptive and that applicant has not shown that the mark

has acquired distinctiveness.    Opposer states:


     … Applicant’s mark has not acquired a “secondary
     meaning” within 

15 U.S.C. § 1052

(f). Under 

15 U.S.C. § 1052

(f), a mark acquires secondary
     meaning, and is therefore trademarkable, if it
     becomes “distinctive of applicant’s goods in
     commerce.” See Hoover Co. v. Royal Appliance Mfg.
     Co., 

238 F.3d 1357, 1360

 (Fed. Cir. 2001). The
     factors to be considered in determining whether a
     secondary meaning has been achieved include: “(1)
     whether actual purchasers of the product bearing
     the claimed trademark associate the trademark with
     the producer, (2) the degree and manner of
     advertising under the claimed trademark, (3) the
     length and manner of claimed use of the trademark,
     and (4) whether the claimed use of the trademark


                                15
Opposition No. 91162008


     has been exclusive.” Levi Strauss & Co. v. Blue
     Bell, Inc., 

778 F.2d 1352, 1358

 (9th Cir. 1985)(en
     banc).2

Opposer’s Brief at 10.

     We conclude, based on opposer’s argument and the

record, that opposer has satisfied its burden of

establishing a prima facie challenge to the adequacy of

applicant’s evidence of acquired distinctiveness.      

Id.

Accordingly, we will proceed to consider whether applicant

has established that GRAND CANYON WEST has acquired

distinctiveness by a preponderance of the evidence.

     The circumstances of the particular case dictate the

type and amount of evidence which is sufficient to establish

that the mark has acquired distinctiveness.      Yamaha Intl.

Corp. v. Hoshino Gakki Co. Ltd., 

6 USPQ2d at 1008

.

     As an initial matter, before considering the

sufficiency of applicant’s evidence of acquired

distinctiveness, we analyze the degree of descriptiveness of

GRAND CANYON WEST because that fact will have a bearing on

the amount of evidence required to show acquired

distinctiveness.   Yamaha Intl. Corp. v. Hoshino Gakki Co.

Ltd., 

6 USPQ2d at 1008

 (the greater the degree of


2
  We note that both opposer and applicant have cited 9th Circuit
authority extensively in their briefs. While we believe our
conclusions are entirely consistent with those cases, we have
relied primarily on precedent from the Federal Circuit, not only
because the Federal Circuit is our primary reviewing court, but
also because its cases address registration issues more
specifically.


                               16
Opposition No. 91162008


descriptiveness, the heavier the burden in proving that the

mark has acquired distinctiveness).      See also Target Brands

Inc. v. Hughes, 

85 USPQ2d 1676

 (TTAB 2007).

     We conclude that GRAND CANYON WEST is highly

descriptive.   GRAND CANYON identifies a well-known place and

WEST is a common term to indicate location.     Even though

there is no evidence of use by anyone other than applicant

(and opposer) of GRAND CANYON WEST, and even though

applicant has complete ownership and control over the

property GRAND CANYON WEST identifies, we nonetheless

conclude that GRAND CANYON WEST is highly descriptive.        Cf.

In re Pebble Beach Co., 19 USPQ2d at 1688-1690.      The fact

that the GRAND CANYON is well known and the GRAND CANYON is

the focus of the identified services is paramount here.       As

we noted, the addition of WEST does nothing to alter the

essential character of the overall mark.      Accordingly, we

conclude that GRAND CANYON WEST is highly descriptive of the

identified services.      Consequently, applicant faces a heavy

burden in establishing acquired distinctiveness for the

mark.

     At the outset, we reject opposer’s argument that

opposer’s own use either negates applicant’s claim to

substantially exclusive use or otherwise impairs applicant’s

claim of acquired distinctiveness.      See L.D. Kichler Co. v.

Davoil Inc., 

52 USPQ2d 1307

 (Fed. Cir. 1999).      It is



                                 17
Opposition No. 91162008


abundantly clear from the record and the parties’ arguments

that applicant regards opposer’s use as infringing.     Opposer

only began its use after applicant and with full knowledge

of applicant’s use.

     Also, contrary to opposer’s suggestion, we may consider

evidence of distinctiveness after the filing date of the

application through the course of this proceeding.     See

McCormick & Co. v. Summers, 

354 F.2d 668

, 

148 USPQ 272

 (CCPA

1966); Harsco Corp. v. Electrical Sciences, Inc., 

9 USPQ2d 1570

 (TTAB 1988); and Kaiser Aluminum & Chemical Corp. v.

American Meter Co., 

153 USPQ 419

 (TTAB 1967).

     Under the circumstances of this case, we conclude that

GRAND CANYON WEST has become distinctive of the services

identified in the application.     We conclude so principally

based on:   (1) the length of applicant’s use, that is, for

nearly twenty years; (2) the extent of applicant’s use in

advertising and promotion; (3) the increasing and now

substantial levels of sales, that is, visitors to GRAND

CANYON WEST; and (4) the level of awareness of applicant’s

services and the GRAND CANYON WEST mark as evidenced by the

substantial level of media coverage.     Applicant’s evidence

is more than sufficient to show that this highly descriptive

mark, GRAND CANYON WEST, has acquired distinctiveness.

     Opposer also argues that applicant’s failure to submit

a survey all but precludes a finding that applicant’s mark



                              18
Opposition No. 91162008


has acquired distinctiveness.     Opposer’s Brief at 10-11.   We

reject this argument.     There is no “requirement” for a

survey, or any other specific type of evidence, to show

acquired distinctiveness.     Yamaha Intl. Corp. v. Hoshino

Gakki Co. Ltd., 

6 USPQ2d at 1008

.

     Accordingly, we conclude that GRAND CANYON WEST has

acquired distinctiveness, and we dismiss the opposition

based on the claim of descriptiveness under Trademark Act

Section 2(e).

                          The Fraud Claim

     We now turn to consideration of opposer’s claim of

fraud.   Even though we have dismissed opposer’s

descriptiveness claim, if we find fraud, we must sustain the

opposition.   In our earlier decision in this case, the Board

ruled on (1) applicant's motion to amend the identification

of services and (2) opposer's motion for summary judgment on

the claim that the application was void because at the time

the application was filed applicant had not used the mark in

commerce in connection with certain services then specified

in the application.

     When these motions were filed, applicant identified its

services as “airport services; air transportation services;

arranging for recreational travel tours and providing

related transportation of passengers by air, boat, raft,

rail, tram, bus, motorized on-road and off-road vehicles,



                                19
Opposition No. 91162008


non-motorized vehicles featuring bicycles, and domestic

animals.”   Grand Canyon West Ranch LLC v. Hualapai Tribe, 78

USPQ2d at 1696.   In the decision, the Board granted

applicant’s motion to delete references to “rail, tram” and

“non-motorized vehicles featuring bicycles, and domestic

animals” from the identification of services.   In its

summary judgment motion, opposer had asserted that applicant

had not used the mark with regard to these services prior to

filing its application.   In reaching this decision the Board

stated, “Applicant has filed a motion to amend its

application to delete the services for which opposer claims

applicant did not use the mark as of the filing date of the

application.   In so doing, applicant has essentially agreed

to accept judgment with regard to those services.”     Id. at

1698.   Furthermore, in its conclusory paragraph the Board

stated:

      Opposer’s motion for summary judgment is granted
      only to the extent that judgment is entered
      against applicant on the ground that applicant did
      not make use of its mark in connection with the
      following services: providing transportation of
      passengers related to recreational travel tours by
      means of rail, tram, non-motorized vehicles
      featuring bicycles, and domestic animals.

Id.

      After that summary judgment decision, opposer

successfully amended its notice of opposition to assert a

new claim of fraud.   Specifically, opposer asserted that

applicant had committed fraud by filing the application with


                              20
Opposition No. 91162008


a claim of use on the services which the Board deleted in

the summary judgment decision.

     The standard of proof for a fraud claim is the rigorous

clear-and-convincing-evidence standard, and it is strictly

applied.     Standard Knitting Ltd. v. Toyota Jidosha Kabushiki

Kaisha, 

77 USPQ2d 1917

, 1926 (TTAB 2006); Smith

International Inc. v. Olin Corp., 

209 USPQ 1033

, 1044 (TTAB

1981).     See also   Torres v. Cantine Torresella S.r.L., 

808 F.2d 46

, 

1 USPQ2d 1483, 1484-85

 (Fed. Cir. 1986); Medinol

Ltd. v. Neuro Vasx Inc., 

67 USPQ2d 1205

, 1209 (TTAB 2003);

Mister Leonard Inc. v. Jacques Leonard Couture Inc., 

23 USPQ2d 1064

 (TTAB 1992); First International Services Corp.

v. Chuckles Inc., 

5 USPQ2d 1628

, 1636 (TTAB 1988).

     At this stage of this case we are bound by our earlier

determination that, at the time applicant filed this

application, applicant was not using the mark in commerce in

connection with “providing transportation of passengers

related to recreational travel tours by means of rail, tram,

non-motorized vehicles featuring bicycles, and domestic

animals” even though applicant claimed such use.     We also

note that it was not until the application was challenged in

this opposition proceeding that applicant sought to amend

its application to delete these services.      See University

Games Corp. v. 20Q.net Inc., __ USPQ2d __, Opposition Nos.

91168142 and 91170668 (TTAB, May 2, 2008).



                                21
Opposition No. 91162008


     Applicant attempts to distinguish this case from

previous cases which found fraud based on false claims of

use as to particular goods or services.    Applicant argues

principally that applicant added references to the services

in question in an examiner’s amendment based on a

misunderstanding of USPTO requirements and procedures.

     First, we must review the steps in the prosecution of

this application leading up to the examiner’s amendment in

question.    The application, as filed, identified the

services as “airport services; air transportation services;

arranging for recreational activities and tours and

providing related transportation.”

     In the first Office action, the Examining Attorney

found the identification of services indefinite and required

amendment.    Applicant failed to provide a sufficiently

definite revised identification in its first response.

     In the second office action, the Examining Attorney

repeated the requirement and, in relevant part, stated, “The

means of the ‘RELATED TRANSPORTATION’ (by air, bus or train)

and the matter transported (e.g., ‘freight’ or ‘passengers’)

must be stated.”    The Examining Attorney also suggested a

revised identification stating, “The applicant may adopt the

following amended statement of services and the

corresponding classification of the same, if applicable.”

Second Office Action (emphasis added).    In relevant part,



                               22
Opposition No. 91162008


the suggested language specified, “… ARRANGING FOR

RECREATIONAL TRAVEL TOURS AND PROVIDING RELATED

TRANSPORTATION OF PASSENGERS BY AIR, BOAT, RAIL OR BUS.”

Id.

 (emphasis in the original).

     Following the second Office action, applicant’s

attorney, Shahpar Shahpar, agreed to the following

identification in an examiner’s amendment:   “airport

services; air transportation services; arranging for

recreational travel tours and providing related

transportation of passengers by air, boat, raft, rail, tram,

bus, motorized on-road and off-road vehicles, non-motorized

vehicles featuring bicycles, and domestic animals.”     This

was the operative identification when the mark was published

for opposition and when this proceeding began.

     The examiner’s amendment included the following

language, “No response is necessary unless there is an

objection to the amendment.   If there is an objection to the

amendment, the applicant should notify the examining

attorney immediately.”    Examiner Amendment of March 2, 2004.

     Applicant states that Mr. Beattie, its representative,

conferred with its attorney, Shahpar Shahpar, before its

attorney authorized the examiner’s amendment.    Applicant

argues:

     … the most plausible inference is that Mr. Beattie
     read the recitation of services as finally amended
     by the trademark examiner within the context of
     “his understanding of trademark law” and the way


                               23
Opposition No. 91162008


     in which the Applicant actually uses its mark to
     “arrange for related transportation” and concluded
     that the examining attorney’s list was applicable
     or appropriate. From Mr. Beattie’s point of view,
     the applicant had attempted (albeit unsuccessfully
     at the time) to arrange for horseback rides, and
     bicycle tours, and tractor-based tram rides. So,
     even if the Board ultimately finds that Mr.
     Beattie misunderstood what constitutes trademark
     use, that does not equate with fraud. If error
     was introduced by Applicant’s silence to the
     examining attorney’s amendment, it was neither
     intentional nor reckless, but inadvertently made
     in the context of; (sic) an examining attorney’s
     puzzling wording of a recitation of services; a
     layman’s understanding of what constitutes
     trademark use; and a layman’s innocent and
     reasonable reliance on the examining attorney’s
     instructions suggesting “appropriate” or
     “applicable” recitations of services.


Applicant’s Brief at 36-37 (citations omitted).

     Applicant also argues that the circumstances of this

case differ from the cited fraud cases because an examiner’s

amendment is unlike the verified statement of goods in an

affidavit of continued use, as in the Mister Leonard case,

or a statement of use, as in the Medinol case.

     We have considered all of applicant’s arguments,

including those not specifically mentioned here, and find

them unpersuasive.   The clear message of the cases involving

false claims of use of the mark on goods or services,

wherever they may appear, is that these statements are

essential to the integrity of the application and

registration process.     See, e.g., Standard Knitting Ltd. v.

Toyota Jidosha Kabushiki Kaisha, 77 USPQ2d at 1926; Medinol



                                24
Opposition No. 91162008


Ltd. v. Neuro Vasx Inc., 67 USPQ2d at 1209; Mister Leonard

Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d at 1064;

First International Services Corp. v. Chuckles Inc., 5

USPQ2d at 1636.    In an application or registration, the

identification of goods or services defines the scope of the

rights claimed.    Trademark Act Section 7, 

15 U.S.C. § 1057

.

     Furthermore, as a practical matter, the USPTO depends

on the accuracy of information provided by applicants and

registrants regarding an applicant’s or registrant’s goods

and services.    The USPTO has no ability to verify the truth

of identifications and other critical information

independently.    Consequently, when an applicant or

registrant provides false information as to a critical

element of the application or registration, in determining

intent we apply a test of whether the applicant or

registrant knew or should have known that the information in

question was false.    See Torres v. Cantine Torresella

S.r.L., 

1 USPQ2d at 1484

; Medinol Ltd. v. Neuro Vasx Inc.,

67 USPQ2d at 1209.

     We have considered applicant’s arguments and conclude

that applicant either knew or should have known that the

statements regarding its services in the examiner’s

amendment were false.     In fact, applicant did not adopt the

Examining Attorney’s suggested identification presented in

the previous office action in the telephone conversation



                                25
Opposition No. 91162008


between applicant’s counsel and the Examining Attorney; it

is evidence that applicant provided input in the

identification specified in the examiner’s amendment in the

course of the telephone conversation between applicant’s

counsel and the Examining Attorney.   For example, it

includes references to rafts, bicycles and domestic animals,

items not specified/suggested by the Examining Attorney in

the preceding Office action.   Nor can we excuse the false

statement on the basis of a misunderstanding or

miscommunication by applicant’s representatives.    See Mister

Leonard Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d at

1064.   It is applicant’s responsibility to ensure that

accurate information is transmitted to the USPTO.   In this

case applicant had the additional benefit of guidance from

counsel.   Furthermore, counsel had the opportunity to

request guidance from the examining attorney.

     We likewise reject applicant’s arguments based on

redundancies or ambiguities in the language leading up to

the examiner’s amendment.   The identification set forth in

the examiner’s amendment was, at least in part, false, and

it was applicant’s responsibility to correct it promptly as

the action invites.   Applicant’s identification refers to a

discrete listing of distinctly different types of

transportation.   The items at issue here in the

identification are not highly technical, nor are they terms



                               26
Opposition No. 91162008


which leave room for confusion as to meaning, particularly

for an applicant engaged in the relevant business.        See,

e.g., Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d at 1209.

     Lastly, we see no reason to treat this case differently

because the communication of the information was not

verified.   Global Maschinen GmbH v. Global Banking Systems,

Inc., 

227 USPQ 862

, 867 (TTAB 1985) (Fraud found where

unverified answer to Examining Attorney’s inquiry was

“recklessly false.”).     The accuracy of the information

applicant provided in agreeing to the examiner’s amendment

was no less critical to the application than the information

applicant provided in the application as filed.     The

integrity of the registration system rests on the accuracy

of the information provided in either form.     Applicants must

ensure that all information they provide is true and

accurate whether or not it is verified.

     Accordingly, we conclude that applicant committed fraud

by including certain services in its revised identification

of services when applicant knew or should have known that it

had not used the mark in connection with those services.

     Finally, we note that this determination of fraud

affects only the application before us.     It does not affect

any rights applicant may have legitimately established by

virtue of its use of the GRAND CANYON WEST mark with respect

to specific services, nor does it affect applicant’s ability



                                27
Opposition No. 91162008


to file a new application to register its mark for such

services.

     Decision:   We dismiss the opposition based on the claim

of descriptiveness under Trademark Act Section 2(e) and

sustain the opposition based on the claim of fraud.

Registration is refused.




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