First Republic Real Estate, Inc.

Trademark Trial and Appeal Board

Jul 21, 2020

88059395 (T.T.A.B. Jul. 21, 2020)

Mailed: July 21, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
Trademark Trial and Appeal Board
————
In re First Republic Real Estate, Inc.
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Serial No. 88059395
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Francis J. Ciaramella of Francis John Ciaramella PLLC
for First Republic Real Estate, Inc.

William T. Verhosek, Trademark Examining Attorney, Law Office 114,
Laurie Kaufman, Managing Attorney.
_____
Before Zervas, Adlin and Goodman, Administrative Trademark Judges.
Opinion by Adlin, Administrative Trademark Judge:
Applicant First Republic Real Estate, Inc. seeks registration of FIRST REPUBLIC
REAL ESTATE, in standard characters (REAL ESTATE disclaimed), for “leasing of
real estate; real estate agency services; real estate brokerage; real estate
management services; rental of office space” in International Class 36.1 The
Examining Attorney finally refused registration under Section 2(d) of the Trademark
Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles these

1 Application Serial No. 88059395, filed July 31, 2018 under Trademark Act Section 1(a)
based on first use dates of December 28, 2010.
This Opinion is Not a
Precedent of the TTAB
Serial No. 88059395
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three commonly-owned registered marks that use of Applicant’s mark in connection
with Applicant’s services is likely to cause confusion:
FIRST REPUBLIC SECURITIES COMPANY, in standard
characters (SECURITIES COMPANY disclaimed), for:
“investment services, namely, providing investment
analysis, consultation, planning, management, advisory,
brokerage, banking, and research services with respect to
stocks, mutual funds, securities, bonds, commodities, real
estate and other instruments of investment; financial
information provided by electronic means; providing
stock/securities market information; financial services,
namely, assisting others with the completion of financial
transactions for stocks, bonds, securities and equities;
management of portfolios comprising securities; private
placements of hedge funds, private equity funds, securities
and derivatives for others,” in International Class 36;2

FIRST REPUBLIC BANK, in standard characters (BANK
disclaimed), for: “Credit card services; debit card services;
commercial and consumer lending, leasing of real estate,
and financing; trust, estate, and fiduciary management,
planning, and consulting; investment services, namely,
providing investment analysis, consultation, planning,
management, advisory, brokerage, banking, and research
services with respect to stocks, mutual funds, securities,
bonds, commodities, real estate and other instruments of
investment; providing secure financial transactions in the
nature of electronic cash transactions, electronic credit
card transactions, electronic debit transactions, electronic
check processing transactions and electronic transmission
of bill payment data via a global computer network;
financial planning and investment advisory services;
financial planning consultation; automated teller machine
services,” in International Class 36;3 and

FIRST REPUBLIC, in standard characters, for: “Credit
card services; debit card services; commercial and
consumer lending, leasing, and financing; trust, estate, and

2 Registration No. 3575197, issued February 17, 2009; renewed.
3 Registration No. 3569284, issued February 3, 2009; renewed.
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fiduciary management, planning, and consulting;
investment services, namely, providing investment
analysis, consultation, planning, management, advisory,
brokerage, banking, and research services with respect to
stocks, mutual funds, securities, bonds, commodities, real
estate and other instruments of investment; providing
secure financial transactions in the nature of electronic
cash transactions, electronic credit card transactions,
electronic debit transactions, electronic check processing
transactions and electronic transmission of bill payment
data via a global computer network; financial planning and
investment advisory services; financial planning
consultation; automated teller machine services; safety
deposit box services,” in International Class 36.4

After the refusal became final, Applicant appealed and filed a request for
reconsideration which was denied. Applicant and the Examining Attorney filed
briefs.
I. Evidentiary Issue
The Examining Attorney objects to Applicant’s citation, for the first time in its
Appeal Brief, to “The Omnibus Appropriations Act of 2009, Pub. L. No. 111-8 (2009),”
pointing out that the Act was not cited during prosecution and Applicant did not
provide a copy of the relevant section it seeks to rely upon (or any specific section). 7
TTABVUE 8 (Applicant’s Appeal Brief); 9 TTABVUE 4 (Examining Attorney’s Appeal
Brief). The objection is overruled. While evidence must be submitted during
prosecution and prior to appeal, the citation is not evidence, but rather legal

4 Registration No. 3785372, issued May 4, 2010; Section 8 affidavit accepted, Section 15
affidavit acknowledged.
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authority. It is neither unusual nor improper for applicants to cite legal authority for
the first time in appeal briefs.5
II. Likelihood of Confusion
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). We must consider each du Pont factor about
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks and the similarities
between the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24, 29 (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.”).
We focus our analysis on cited Registration No. 3569284 for FIRST REPUBLIC
BANK (the “’284 Registration”), because if we find confusion likely between that cited
mark and Applicant’s mark, we need not consider the likelihood of confusion between
Applicant’s mark and the other cited marks, while if we find no likelihood of confusion
between Applicant’s mark and FIRST REPUBLIC BANK, we would not find a

5 Applicant cites the statute in support of an argument it made throughout prosecution. The
Examining Attorney therefore had several opportunities to address the argument during
prosecution.
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likelihood of confusion between Applicant’s mark and the other cited marks. In re
Max Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. The Services, Channels of Trade and Classes of Consumers
The services are identical because the ’284 Registration identifies “leasing of real
estate” as does the involved application. Because the services are identical, we must
presume that the channels of trade and classes of purchasers for these services are
as well. In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012)
(even though there was no evidence regarding channels of trade and classes of
consumers, the Board was entitled to rely on this legal presumption in determining
likelihood of confusion); Am. Lebanese Syrian Associated Charities Inc. v. Child
Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).6
The identity of these services and their overlapping channels of trade and classes
of purchasers not only weigh heavily in favor of finding a likelihood of confusion, but

6 The Examining Attorney also introduced probative and persuasive evidence establishing a
relationship between “real estate agency services; real estate brokerage; real estate
management services; rental of office space,” identified in the involved application, and
“investment services, namely, providing investment analysis, consultation, planning,
management, advisory, brokerage, banking, and research services with respect … real
estate,” identified in the cited ’284 Registration. Specifically, the Examining Attorney
introduced seven use-based third-party registrations showing marks registered to different
owners in connection with real estate investment services on the one hand and real estate
agency or brokerage services on the other. December 10, 2018 Office Action TSDR 14-42. This
evidences a relationship between the services. See In re Mucky Duck Mustard Co., 6 USPQ2d
1467, 1470 n.6 (TTAB 1998). The Examining Attorney also introduced Internet printouts
showing five additional companies which offer both types of services. May 19, 2019 Office
Action TSDR 9-25. This evidence also establishes that these services are related, and travel
in overlapping channels of trade to some of the same customers.
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also reduce the degree of similarity between the marks necessary to find a likelihood
of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 94 USPQ2d
at 1260; In re Max Capital Grp. Ltd., 93 USPQ2d 1243, 1248 (TTAB 2010).7
B. The Marks
We consider the marks “in their entireties as to appearance, sound, connotation
and commercial impression.” Palm Bay Imps. 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). Here, the marks are similar because they both
include and begin with FIRST REPUBLIC, and different because the involved mark
ends with REAL ESTATE while the mark in the cited ’284 Registration ends with
BANK. We find that the similarities between the marks significantly outweigh the
differences.
In both marks, the dominant portion is FIRST REPUBLIC. It is dominant because
it comes first. Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB

7 Applicant’s reliance on the “doctrine of natural expansion” and a 2009 federal omnibus
appropriations bill is misplaced. The doctrine is typically relevant when there is a question
regarding priority in an inter partes case. See Orange Bang, Inc. v. Olé Mexican Foods, Inc.,
116 USPQ2d 1102, 1119 (TTAB 2015); Mason Engineering and Design Corp. v. Mateson
Chemical Corp., 225 USPQ 956, 962 (TTAB 1985). Priority is not at issue in this ex parte
appeal, however. The appropriations bill is cited only generally. That is, Applicant has failed
to cite any specific section or authority for its suggestion that Registrant is legally prohibited
from entering the real estate business. In any event, the record establishes that banking
services may be, and, as shown below, that some of Registrant’s banking services are, related
to real estate, and this “could give rise to the mistaken belief that [the services] emanate from
the same source.” Coach Services Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1722 (Fed. Cir. 2012) (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724 (TTAB
2007)). “Natural expansion” is beside the point.
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1988) (“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 Imports Inc., 73
USPQ2d at 1692; Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992).
It is also dominant because the remaining portions of the involved and cited marks
are descriptive (if not generic) and disclaimed. These trailing, at best descriptive
terms are entitled to less weight in our analysis. Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“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.’”) (quoting In re Nat’l
Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)).
Because the marks share the identical and inherently distinctive leading term
FIRST REPUBLIC, they look and sound similar, notwithstanding that the merely
descriptive trailing terms are distinct in appearance and sound.
While Applicant contends that the merely descriptive trailing terms result in the
marks conveying different meanings, we do not agree that the meanings are so
different. Indeed, the evidence of record reveals not only a connection between
banking and investment services and real estate-related services as a general matter,
May 19, 2019 Office Action TSDR 9-25, but a specific connection between Registrant
FIRST REPUBLIC BANK and real estate-related services such as those identified in
the involved application. In fact, the following graphic is from Registrant FIRST
REPUBLIC BANK’s “Overview of Services”:
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November 8, 2019 Request for Reconsideration TSDR 25. As shown, the left side of
the graphic lists FIRST REPUBLIC BANK’s “full service private and business
banking” services, which include “residential lending” and “commercial real estate
lending.” The brochure goes on to list the types of clients served by Registrant’s
“private business banking” services, including “real estate investors,” and to identify
types of “residential lending” services Registrant provides, which include “single
family home mortgages,” “co-op and condominium loans” and “home equity lines of
credit.” Id. at 26-27. Thus, based on the evidence of record regarding both third-party
banks and Registrant itself, the term BANK will be interpreted by at least some
Serial No. 88059395
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consumers as encompassing real estate-related services, such as real estate-related
lending.
More generally, because real estate and banking (as well as investment) services
are related, consumers familiar with FIRST REPUBLIC BANK who encounter
Applicant’s FIRST REPUBLIC REAL ESTATE mark may very well assume that it
identifies a logical or typical extension of Registrant’s brand, or an extension of
Registrant’s banking services into real estate, or otherwise assume some type of
affiliation or connection between Applicant and Registrant.
In short, the marks are more similar than dissimilar when considered in their
entireties. This factor also weighs in favor of finding a likelihood of confusion.8
C. Consumer Sophistication and Care
We accept Applicant’s argument that at least some consumers of Applicant’s and
Registrant’s services will be sophisticated or that they will at least exercise

8 Applicant correctly points out that there is no evidence that the cited mark is famous, but
that is irrelevant. Indeed, “the owner of the cited registration is not a party to this ex parte
appeal, and the Examining Attorney is under no obligation to demonstrate the fame of a cited
mark.” In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016). See also In re
Majestic Distilling Co., 65 USPQ2d at 1205 (“Although we have previously held that the fame
of a registered mark is relevant to likelihood of confusion, DuPont, 476 F.2d at 1361, 177
USPQ at 567 (factor five), we decline to establish the converse rule that likelihood of
confusion is precluded by a registered mark’s not being famous.”); In re Mr. Recipe, LLC, 118
USPQ2d 1084, 1086 (TTAB 2016) (“in an ex parte appeal the ‘fame of the mark’ factor is
normally treated as neutral because the record generally includes no evidence as to fame.”);
In re Davey Prods. Pty Ltd. 92 USPQ2d 1198, 1204 (TTAB 2009) (“[I]t is settled that the
absence of such evidence is not particularly significant in the context of an ex parte
proceeding.”); In re Big Pig Inc., 81 USPQ2d 1436, 1439 (TTAB 2006) (“It is not necessary
that a registered mark be famous to be entitled to protection against a confusingly similar
mark.”).
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heightened care in purchasing the services given the expense of real estate and the
importance of money and financial management. This factor therefore weighs against
finding a likelihood of confusion, but we find this factor outweighed by the identity of
the services and the similarity of the marks. See, In re Research Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Carlisle Chem. Works, Inc. v. Hardman
& Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970); see also HRL Assoc.,
Inc. v. Weiss Assoc., 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).
D. Actual Confusion
Applicant’s reliance on the absence of actual confusion is misplaced, because there
is no evidence regarding the extent of Applicant’s use of its mark, or the extent of
Registrant’s use of the cited mark. Therefore, we cannot gauge whether or the extent
to which there has been an opportunity for confusion to occur if it were likely to occur.
See Nina Ricci S.A.R.L. v. E.T.F. Enters. Inc., 889 F.2d 1070, 12 USPQ2d 1901, 1903
(Fed. Cir. 1989) (“The absence of any showing of actual confusion is of very little, if
any, probative value here because (1) no evidence was presented as to the extent of
ETF’s use of the VITTORIO RICCI mark on the merchandise in question in prior
years ….”); In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB 1984). In any
event, a lack of evidence of actual confusion carries little weight in an ex parte case
such as this. Majestic Distilling, 65 USPQ2d at 1205. “[I]t is unnecessary to show
actual confusion in establishing likelihood of confusion.” Giant Food, Inc. v. Nation’s
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Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 396 (Fed. Cir. 1983). This factor is
neutral.
III. Conclusion
The services are identical in part and otherwise related and presumed to travel in
overlapping channels of trade to the same consumers. The marks are similar. These
factors outweigh any purchaser care or sophistication. Confusion is likely.

Decision: The refusal to register Applicant’s mark under Section 2(d) of the
Trademark Act is affirmed.