## Facts

- An applicant sought registration of the service mark “BED & BREAKFAST REGISTRY” for “making lodging reservations for others in private homes.”
- The PTO refused registration on two grounds: likelihood of confusion with the registered service mark “BED & BREAKFAST INTERNATIONAL” for room-booking services, and mere descriptiveness.
- The TTAB affirmed both refusals, finding the marks confusingly similar and the applicant’s mark merely descriptive of the services.
- The record included evidence that “bed and breakfast” was commonly used in travel guides, directories, and newspapers to describe lodging and related reservation/referral services.
- The record also included articles describing a “bed-and-breakfast registry” as a listing/referral service for bed-and-breakfast accommodations.

## Issues

1. Whether “BED & BREAKFAST REGISTRY” is likely to cause confusion with “BED & BREAKFAST INTERNATIONAL” for similar booking services under Lanham Act § 2(d).
2. Whether “BED & BREAKFAST REGISTRY,” as applied to reservation services for private-home lodging, is merely descriptive and unregistrable under Lanham Act § 2(e)(1).

## Decision

- The court reversed the TTAB’s § 2(d) refusal, holding the marks were not confusingly similar given the weakness of the shared descriptive wording “bed and breakfast” and the distinguishing effect of “REGISTRY” versus “INTERNATIONAL.”
- The court affirmed the TTAB’s § 2(e)(1) refusal, holding “BED & BREAKFAST REGISTRY” immediately describes a registry/listing and reservation service for bed-and-breakfast accommodations.
- Because descriptiveness independently barred registration on the Principal Register, the refusal to register was sustained.

## Legal Principles

- In a § 2(d) analysis, shared descriptive matter is accorded limited weight; consumers are more likely to rely on noncommon, source-indicating portions to distinguish marks.
- Marks must be considered as a whole, but it is permissible to give differing weight to components where a shared element is weak or descriptive.
- A term is “merely descriptive” under § 2(e)(1) if it immediately conveys information about the nature, function, or characteristics of the services.
- Lack of likely confusion under § 2(d) does not prevent refusal under § 2(e)(1); the statutory grounds are independent.

## Conclusion

The court held that the common phrase “bed and breakfast” was descriptive and weak for booking-related services, defeating a likelihood-of-confusion refusal, but affirmed refusal to register because “BED & BREAKFAST REGISTRY” directly describes a registry-based reservation service for bed-and-breakfast lodging.


In re Bed & Breakfast Registry, 791 F.2d 157 (Fed. Cir. 1986)