CP IP Holdings US LLC

Trademark Trial and Appeal Board

Mar 9, 2020

87746784 (T.T.A.B. Mar. 9, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 9, 2020

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re CP IP Holdings US LLC
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Serial No. 87746784
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David A. Bell of Haynes and Boone, LLP for CP IP Holdings US LLC.

Lisa Papale, Trademark Examining Attorney, Law Office 122,
John Lincoski, Managing Attorney.
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Before Cataldo, Wellington and Heasley, Administrative Trademark Judges.

Opinion by Cataldo, Administrative Trademark Judge:
Applicant, CP IP Holdings US LLC, seeks registration on the Principal Register
of the mark CAYDON (in standard characters), identifying the following services, as
amended:
Business operation of multi-family and condominium residential
housing units for others; business operation of commercial real property
for others; business operation of commercial real property in the nature
of retail, restaurant, hotel, office and industrial real estate for others;
real estate sales management of multi-family and condominium
residential housing units; real estate sales management of commercial
real property; real estate sales management of commercial real property
in the nature of retail, restaurant, hotel, office and industrial real estate,
in International Class 35;

Serial No. 87746784
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Land acquisition services; management and leasing of multi-family and
condominium residential housing units; management and leasing of
commercial real property; management and leasing of commercial real
property in the nature of retail, restaurant, hotel, office and industrial
real estate, in International Class 36;

Real estate development and construction of commercial, residential,
and industrial properties; land development services, namely, planning
and laying out of commercial buildings and residential communities;
housing services, namely, development of real property, namely, repair,
improvement, and new construction; property maintenance; building
construction supervision and construction project management;
advisory services relating to building construction, real estate property
development, and renovation of property; provision of information in
relation to building construction, in International Class 37.1

The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that
Applicant’s proposed mark, when used in connection with the identified services, so
resembles the mark KADEN HOMES (in standard characters with HOMES
disclaimed), registered on the Principal Register for
Custom construction of homes and real estate development, in
International Class 37,2

as to be likely to cause confusion, mistake or deception.
When the refusal was made final, Applicant appealed and filed a Request for
Reconsideration. When the Examining Attorney denied the Request for

1 Application Serial No. 87746784 was filed on January 8, 2018, based upon Applicant’s
allegation of a bona fide intent to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), and amended to assert this basis as to all three classes
of services.
2 Registration No. 4652219 issued on December 9, 2014.
Serial No. 87746784
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Reconsideration, this appeal resumed. The Examining Attorney and Applicant filed
briefs. We affirm the refusal to register.
I. Evidentiary Matters
A. Evidence Submitted with Request for Reconsideration
With its May 16, 2019 Request for Reconsideration,3 Applicant submitted a chart
purporting to show pairs or groups of coexisting registrations for marks with common
characteristics, reciting services related to those at issue herein. The Examining
Attorney, in her June 29, 2019 denial of Applicant’s Request for Reconsideration,4
advised Applicant that the mere submission of a list or chart of registrations does not
make them of record and, further, instructed Applicant in how to make the third-
party registrations properly of record. As the Examining Attorney made clear, to
make a third-party registration of record, a copy of the registration (either a copy of
the paper USPTO record, or a copy taken from the electronic records of the Office)
should be submitted. See. e.g., In re Duofold Inc., 184 USPQ 638, 640 (TTAB 1974);
See also generally TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE
(TBMP) § 1208.02 (2019) and authorities cited therein. Applicant did not provide
copies of the listed registrations. Inasmuch as Applicant was warned of the
evidentiary failing at a time when it could correct the deficiency, and still failed to
correct it, the chart of purported registrations will not be considered.5

3 At .pdf 5-7.
4 At .pdf 3.
5 The proper procedure for an applicant or examining attorney to introduce evidence after an
appeal has been filed is to submit a written request with the Board to suspend the appeal
Serial No. 87746784
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B. Evidence Submitted with Applicant’s Brief
Applicant also appended evidence to its appeal brief.6 To the extent Applicant
submitted with its appeal brief evidence that is duplicative of the evidence previously
submitted during prosecution of its involved application, we need not and do not give
this redundant evidence any consideration. Any of the evidence submitted with
Applicant’s appeal brief that was not previously submitted during prosecution is
untimely and will not be considered. See Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d); see also TBMP § 1203.02(e) and § 1207.01 and authorities cited therein.
II. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E. I. du Pont de Nemours & Co. (DuPont), 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities between the marks and the
relatedness of the goods or services. See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
A. Relatedness of the Services and Channels of Trade
With regard to the services, channels of trade and classes of consumers, we must
make our determinations under these factors based on the services as they are
identified in the application and cited registration. See In re Dixie Rests. Inc., 105

and remand the application for further examination. See Trademark Rule 2.142(d), 37 C.F.R.
§ 2.142(d). See also TBMP § 1207.02 and authorities cited therein.
6 11 TTABVUE 11-43.
Serial No. 87746784
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F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002); Octocom Sys., Inc. v. Hous. Computer Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990). “This factor considers whether ‘the consuming
public may perceive [the respective goods or services of the parties] as related enough
to cause confusion about the source or origin of the goods and services.’” In re St.
Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1086 (Fed. Cir. 2014) (quoting
Hewlett Packard, 62 USPQ2d at 1004).
In this case, the “Custom construction of homes and real estate development”
identified in the cited registration are legally identical in part to the “Real estate
development and construction of commercial, residential, and industrial properties”
identified in the involved application. Both recite identical “real estate development”
and both involve construction of identical properties inasmuch as homes are
residential properties. As a result, Applicant’s services in Class 37 are identical in
part to the services identified in the cited registration. Because the Class 37 services
in the application and cited registration are legally identical in part, there is no need
for us to further consider the relatedness of the services in that International Class.
See SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 938-39 (Fed. Cir. 1983)
(holding that a single good from among several may sustain a finding of likelihood of
confusion); Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be
Serial No. 87746784
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confusion with respect to any item that comes within the identification of goods or
services in the application).
With regard to Applicant’s services recited in International Classes 35 and 36, the
Examining Attorney introduced evidence from the following third-party webpages
that offer both real estate development and construction services and Applicant’s real
property or real estate sales management in Class 35 and Applicant’s real estate
management and leasing and land acquisition services in Class 36:
• CHP (Community Housing Partners), offering residential real estate
development and construction services as well as property management, sales
and leasing services (April 24, 2018 First Office Action at .pdf 25-30);

• Simpson Real Estate Services, offering residential and commercial real
estate development and construction services as well as property management,
sales and leasing services (Id. at .pdf 31-50);

• Capital City, offering residential and commercial real estate acquisitions,
development, construction and sales services (Id. at .pdf 51-57);

• Paradigm, offering residential real estate development, construction,
property management and leasing services (Id. at .pdf 58-72);

• Related, offering residential and commercial real estate acquisition,
development, construction, property management, sales and leasing services,
as well as consulting services related thereto (Id. at .pdf 72-75);

• Conifer, offering commercial and residential real estate development,
construction, sales, leasing and property management services (See Office
action dated December 9, 2018 at .pdf 7-12);

• RRB Development, offering commercial and residential real estate
acquisitions, development, construction and property management services, as
well as consulting services relating thereto (Id. at 13-15);

• Spectrum Management, offering commercial and residential real estate
development, construction and property management services (Id. at 16-24);

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• Atlantic Pacific Companies, offering residential real estate acquisitions,
development, construction, sales, leasing and property management services,
as well as consulting services relating thereto (Id. at .pdf 25-31);

• Monument Realty, offering commercial and residential real estate
development, construction, sales, leasing and property management services
(Id. at .pdf 32-33);

• Bozzuto, offering residential real estate development, construction, leasing,
sales and property management services, as well as consulting services
relating thereto (June 29, 2019 Denial of Request for Reconsideration at .pdf
4-25);

• Steadfast, offering commercial and residential real estate acquisitions,
development, and construction, leasing, sales and property management
services (Id. at .pdf 26-28);

• Orr Partners, offering commercial and residential real estate development,
construction and property management services (Id. at .pdf 29-32);

• Evergreen Real Estate Group, offering residential real estate development,
construction, and leasing and property management services (Id. at .pdf 33-
46);

• Teal Realty & Development, offering commercial and residential real estate
development, construction, sales, leasing and property management services,
as well as consultation services relating thereto (Id. at .pdf 47-50); and

• Pennrose, offering residential real estate development, leasing and property
management services (Id. at .pdf 51-53).

This evidence demonstrates that at least sixteen third parties provide real estate
development and construction identified in the cited registration and Class 37 of the
involved application as well as the property sales, management, leasing and
acquisition services identified in Classes 35 and 36 of the involved application under
the same mark. “These websites demonstrate that services of the type offered by both
Applicant in all three classes and Registrant are marketed and sold together online
under the same marks. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d
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1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (evidence that “a single company sells
the goods and services of both parties, if presented, is relevant to the relatedness
analysis”). We find that consumers would readily perceive these types of services as
being sufficiently related as to be offered by a single business.” In re Integrated
Embedded, 120 USPQ2d 1504, 1514-15 (TTAB 2016).
Applicant argues that it “develops large, high-end properties, such as high-rise
apartment complexes, and rents or sells units to consumers. Kaden Builders
[Registrant] contracts with its consumers to build custom single-family houses.”7
However, Applicant’s broadly identified construction of residential properties
encompasses and thus is legally identical to the more narrowly identified “custom
construction of homes” identified in the cited registration. “We have no authority to
read any restrictions or limitations into the [applicant’s or] registrant’s description of
[services].” In re Thor Tech, Inc., 90 USPQ2d 1634, 1638 (TTAB 2009). Nor may an
applicant restrict the scope of the services covered in the cited registration by
argument or extrinsic evidence. In re Midwest Gaming & Entertainment LLC, 106
USPQ2d 1163, 1165 (TTAB 2013); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647
(TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB 1986). See
also Octocom Sys., Inc., 16 USPQ2d at 1787 (“The authority is legion that the question
of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application regardless of what the record may

7 Applicant’s brief, 11 TTABVUE 7. Applicant does not address the relatedness of the services
in its briefs, and raises this argument in support of its position that its mark is dissimilar in
commercial impression from the mark in the cited registration.
Serial No. 87746784
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reveal as to the particular nature of an applicant’s goods, the particular channels of
trade or the class of purchasers to which the sales of goods are directed.”).
Inasmuch as the services identified in Class 37 of the application at issue and the
cited registration are, in part, legally identical, we must presume that the channels
of trade and classes of purchasers for these services are the same. See Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1005 (Fed. Cir.
2002) (“absent restrictions in the application and registration, [related] goods and
services are presumed to travel in the same channels of trade to the same class of
purchasers”). “Given the identity of the services, at least in part, and the lack of
restrictions on trade channels and classes of consumers in the recitations of services,
we presume that these services travel through the same channels of trade….”
Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030,
1033 (TTAB 2016).
Evidence of record discussed above demonstrates that both Applicant’s Class 35
and 36 services and the services identified in the cited registration may be
encountered by the same classes of consumers under the same marks in at least one
common trade channel, i.e., the physical locations and corresponding websites of
entities providing real estate development, construction, sales and leasing
management of properties and land acquisition services. In addition, the
identifications of services in the involved application and cited registration do not
recite any limitations as to the channels of trade in which the services are or will be
offered. In the absence of trade channel limitations on the services offered under the
Serial No. 87746784
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marks, we must presume that these services are offered in all customary trade
channels. See Citigroup v. Capital City Bank Grp., 98 USPQ2d at 1261; In re Jump
Designs LLC, 80 USPQ2d 1370, 1374 (TTAB 2006).
We find that the DuPont factors of the in-part legal identity and otherwise
relatedness of the services, channels of trade and consumers weigh in favor of
likelihood of confusion.
B. Conditions of Sale
Under the fourth DuPont factor, we consider “[t]he conditions under which and
buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing.”
DuPont, 177 USPQ at 567. Applicant argues that:
In the case at hand, the respective services are offered to highly
sophisticated and knowledgeable consumers who do not make the
decision to purchase the respective services casually. Applicant develops
and manages large, high-end properties, such as high-rise apartment
complexes. Applicant’s consumers are individuals that rent or buy
apartment units or rent retail space in its buildings. The owner of the
Cited Mark, Kaden Builders, L.P., builds custom single-family homes
for homebuyers.

Several courts have recognized that those transacting for a place to live
are sophisticated and careful purchasers due to the costs and
significance of such a transaction. See, e.g., Homeowners Group, 18
USPQ2d at 1596 (“because selling one's property is likely the most
significant commercial transaction ever undertaken for most people,
[Defendant’s] customers are likely to carefully select the provider of
sales services.”); Charles F. Ryan & Son, Inc. v. Lancaster Homes, Inc.,
144 USPQ 234 (N.Y. Sup. Ct. App. Div. 1964) (“[W]hen persons are
considering a purchase as substantial as a $22,000 to $50,000 home, it
is almost incomprehensible that they would not thoroughly investigate
the identity of the proposed builder at the very outset.”).8

8 Applicant’s brief, 11 TTABVUE 9.
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Applicant may be correct that home ownership or rental represents a substantial
expense for many people, and may be the most significant commercial transaction in
which they participate. However, neither the recitations of services nor the evidence
of record suggests that residences may not be purchased or rented by less
sophisticated purchasers. It is well settled that the standard of care is that of the
least sophisticated potential purchaser. Stone Lion Capital v. Lion Capital, 110
USPQ2d at 1163 cited in In re FCA US LLC, 126 USPQ2d 1214, 1222 (TTAB 2018)
(“Board precedent requires our decision to be based on the least sophisticated potential
purchasers.”). While the nature of the services themselves suggest that purchasers
will exercise a greater than average degree of care in selecting a home, ultimately the
purchasers of the services at issue include anyone seeking to purchase or rent a
residence, regardless of their level of care or sophistication.
In this case, the legal identity or similarity of the services and similarity of the
marks outweigh any sophisticated purchasing decision. See HRL Assocs., Inc. v. Weiss
Assocs., Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, 902 F.2d 1546, 14 USPQ2d 1840
(Fed. Cir. 1990) (similarities of goods and marks outweigh sophisticated purchasers,
careful purchasing decision, and expensive goods.). See also In re Research & Trading
Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986), (citing Carlisle Chem. Works,
Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)
(“Human memories even of discriminating purchasers … are not infallible.”); In re
Integrated Embedded, 120 USPQ2d 1504, 1516 (TTAB 2016).
The fourth DuPont factor slightly favors a finding of no likelihood of confusion.
Serial No. 87746784
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C. Similarity/Dissimilarity of the Marks
We consider Applicant’s mark CAYDON and the registered mark KADEN
HOMES, both in standard characters, and compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports Inc.
v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). The marks “must be
considered … in light of the fallibility of memory.” St. Helena Hosp., 113 USPQ2d at
1085 (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components Corp., 565 F.2d
683, 196 USPQ 1 (CCPA 1977)). The proper focus is on the recollection of the average
consumer, who retains a general rather than specific impression of the marks.
Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The applied-for mark CAYDON and the registered mark KADEN HOMES are
similar in that the terms CAYDON and KADEN are similar in appearance and highly
similar in sound. With respect to the meanings of the two marks, the Examining
Attorney has introduced evidence suggesting that CAYDON “as a name for boys is of
Arabic derivation, and the meaning of Caydon is ‘companion.’ Caydon is an alternate
spelling of Kaden.”9 However, this evidence also establishes that “Caydon is an
uncommonly occurring given name for males. Caydon is an equivalently unusual
surname too for both adults and children.”10 Applicant submitted evidence

9 April 24, 2018 First Office Action at .pdf 10-16.
10 Id. at 11.
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corroborating that CAYDON is a given name, albeit not one of the more common ones:
“Caydon is not widely used as a baby name for boys. It is not in the top 1000 names.”11
We thus find on this record that consumers are unlikely to be familiar with the
meaning or connotation created by the terms “Caydon” or “Kaden.” Consumers not
familiar with the meaning of the terms will consider both to be arbitrary terms
somewhat similar in appearance and similar in sound with no meaning.
With regard to the term HOMES in the registered mark, disclaimed matter is
often “less significant in creating the mark’s commercial impression.” In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001). However, while a disclaimed
term … may be given little weight … it may not be ignored.” M2 Software Inc. v. M2
Communications Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1948-49 (Fed. Cir. 2006). The
third-party evidence of record establishes that, consistent with the mark in the cited
registration, the term HOMES is, at best, highly descriptive of the “Custom
construction of homes and real estate development” recited therein. “Regarding
descriptive terms, this court has noted that the ‘descriptive component of a mark may
be given little weight in reaching a conclusion on the likelihood of confusion.’”
Cunningham v. Laser Golf Corp., 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (quoting In
re Nat’l Data, 224 USPQ at 752). Nonetheless, even descriptive and generic terms
have some impact on the overall commercial impression created by the marks. See
Juice Generation, Inc. v. GS Enters., 794 F.3d 1334, 115 USPQ2d 1671, 1676 (Fed.

11 October 23, 2018 Response to First Office Action at .pdf 35-40.
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Cir. 2015) (Board paid insufficient heed to the word JUICE in context of juice bar
services).
For these reasons, we find that KADEN is the dominant portion of the registered
mark. Presto Products, Inc. v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB
1988) (“…[it is] a matter of some importance since it is often the first part of a mark
which is most likely to be impressed upon the mind of a purchaser and remembered”).
See also Palm Bay Imps., 73 USPQ2d at 1692 (“The presence of this strong distinctive
term as the first word in both parties’ marks renders the marks similar, especially in
light of the largely laudatory (and hence non-source identifying) significance of
ROYALE.”).
Turning to the marks in their entireties, we find that CAYDON and KADEN
HOMES are more similar than dissimilar in appearance and sound. The mark
CAYDON and the term KADEN may also be understood as transliterations of the
same Arabic given name for boys and, in that case, they will share the same
connotation. The term HOMES in the registered mark is, at best, highly descriptive
of the recited services and contributes little to the overall commercial impression of
the mark. We find, as a result, that the differences between the marks are outweighed
by their similarities. Considered in their entireties, we find that the marks convey
similar overall commercial impressions. This DuPont factor thus supports a finding
that confusion is likely.
This is particularly the case with regard to Applicant’s services identified in Class
37 because, “[w]hen marks would appear on virtually identical ... services, the degree
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of similarity [of the marks] necessary to support a conclusion of likely confusion
declines.” See Century 21 Real Estate Corp. v. Century Life of America, 23 USPQ2d at
1700. See also ECI Division of E-Systems, Inc. v. Environmental Communications
Inc., 207 USPQ 443, 449 (TTAB 1980).
D. Conclusion
We find that the Class 37 services are legally identical in part and are presumed
to be available in the same channels of trade at all price points to the same classes of
consumers. Applicant’s Class 35 and 36 services are related to the services in the
cited registration and move in at least one common channel of trade. We further find
Applicant’s mark CAYDON and the KADEN HOMES mark in the cited registration
are more similar than dissimilar, and no evidence of record establishes that most
distinctive portion of the registered mark, i.e., KADEN, is weak in connection with
the services at issue. While certain consumers of the services at issue may be
discerning, the identical or closely related nature of the services and their trade
channels as well as the similarity of the marks outweighs any consumer
sophistication. We find, therefore, that confusion is likely between Applicant’s mark
CAYDON and the mark KADEN HOMES in the cited registration.
Decision: The refusal to register based on likelihood of confusion under Section
2(d) of the Trademark Act is affirmed as to all three classes of services.