Genesis Investment Properties, LLC

Trademark Trial and Appeal Board

Aug 8, 2016

No. 86430839 (T.T.A.B. Aug. 8, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 8, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Genesis Investment Properties, LLC
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Serial Nos. 86430828, 86430839 and 86430794
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Siu K. Lo, Esq. of Genesis Investment Properties, LLC.

Toby E. Bulloff, Trademark Examining Attorney, Law Office 119,
Brett Golden, Managing Attorney.
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Before Seeherman, Lykos and Shaw,
Administrative Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:
Genesis Investment Properties, LLC (“Applicant”) seeks registration on the
Principal Register of the following three marks:
GENESIS INVESTMENT PROPERTIES in standard characters, with
INVESTMENT PROPERTIES disclaimed (Serial No. 86430794)

(GENESIS and design mark), with
INVESTMENT PROPERTIES disclaimed (Serial
No. 86430839). Applicant has provided the
following description of its mark: “The mark consists of the stylized term
‘GENESIS’ that is located in the center of the mark and above the
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stylized phrase ‘INVESTMENT PROPERTIES’; the ‘INVES’ of
“INVESTMENT’ is located directly below the ‘G’ of ‘GENESIS’ and the
‘IES’ of ‘PROPERTIES’ is located directly below the first ‘S’ of
‘GENESIS.’ The mark also consists of a stylized depiction of a molecule
located to the right-hand side of the mark, the molecule consists of
fourteen spheres representing atoms that are connected by straight
bands representing bonds wherein the letter ‘I’ in ‘GENESIS’ is depicted
as a vertical bond connecting ten (10) atoms above and four (4) atoms
below the ‘I’ of ‘GENESIS’.” Color is not claimed as a feature of the mark.

(GENESIS and gold design mark), with
INVESTMENT PROPERTIES disclaimed (Serial No. 86430828).
Applicant has provided the following description of its mark: “The mark
consists of the stylized term ‘GENESIS’ that is located in the center of
the mark and above the stylized phrase ‘INVESTMENT PROPERTIES’;
the ‘INVES’ of ‘INVESTMENT’ is located directly below the ‘G’ of
‘GENESIS’ and the ‘IES’ of ‘PROPERTIES’ is located directly below the
first ‘S’ of ‘GENESIS.’ The mark also consists of a stylized depiction of a
molecule located to the right-hand side of the mark, the molecule
consists of fourteen spheres representing atoms that are connected by
straight black bands representing bonds wherein the letter ‘I’ in
‘GENESIS’ is depicted as a vertical bond connecting ten (10) atoms
above and four (4) atoms below the ‘I’ of ‘GENESIS’; the stylized term
‘GENESIS’ is depicted in the color black; the fourteen spheres
representing atoms are depicted in the color gold and shaded in the color
white; the stylized phrase ‘INVESTMENT PROPERTIES’ is depicted in
the color gold.” The colors black, white and gold are claimed as a feature
of the mark.

All three applications identify the services as:
apartment and office rentals; building management; financial
investment in the field of real estate; management of apartments; real
estate management of residential rental properties and commercial
properties; real estate management services, all of the foregoing goods
and services excluding commercial and residential real estate agency
services (Class 36).

The applications were all filed on October 22, 2014, and all assert first use at least as
early as January 1, 2013 and first use in commerce at least as early as April 1, 2014.
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The Trademark Examining Attorney has refused registration of Applicant’s
marks pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the
ground that Applicant’s marks so resemble the following marks, shown below, that
when used in connection with Applicant’s identified services, they are likely to cause
confusion or mistake or to deceive. Office records show that the two GENESIS
PARTNERS registrations are owned by one entity, and the GENESIS FRANCHISE
ENTERPRISES registration is owned by another:
GENESIS PARTNERS (typed form), with PARTNERS disclaimed, for
“real estate services, namely, managing real property.”1

with PARTNERS disclaimed, for “real estate
services, namely, managing real property.”2

with FRANCHISE ENTERPRISES disclaimed, for
“commercial and residential real estate agency
services.” “The mark consists of a globe with oval,
curved and straight lines, a stylized letter ‘G’ and
the words ‘Genesis,’ ‘Franchise’, and
‘Enterprises’.”3

1 Registration No. 3256759, issued June 27, 2007; Section 8 affidavit accepted; Section 15
affidavit acknowledged. Prior to November 2, 2003, “standard character” drawings were
known as “typed” drawings. TMEP § 807.03(i) (April 2016). Because the application which
issued as Registration No. 3256759 was filed in 2002, the “typed mark” designation appears
in the Office records for this registration. “A typed mark is the legal equivalent of a standard
character mark.” Id. We will use the updated term “standard character mark” in referring to
the mark in this registration.
2 Registration No. 3254018, issued June 19, 2007; Section 8 affidavit accepted; Section 15
affidavit acknowledged.
3 Registration No. 4063751, issued November 29, 2011.
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Applicant has appealed. Because the appeals involve similar records and issues,
we consolidate them and decide them in this single opinion.4
We affirm the refusals of registration.

I. Preliminary Issues
We note that Applicant submitted the same set of exhibits with its July 9, 2015
response to the first Office action and with its January 28, 2016 request for
reconsideration. These same exhibits, as well as an additional one, were also attached
to its appeal brief. It is not necessary to resubmit exhibits, and only increases the
bulk of the file. See In re Allegiance Staffing, 115 USPQ2d 1319, 1323 (TTAB 2015)
(practice of attaching to appeal brief copies of the same exhibits submitted with
responses is discouraged). Moreover, doing so creates a burden for the Board, since it
requires the Board to determine whether the attachments had been properly made of
record. In re SL&E Training Stable Inc., 88 USPQ2d 1216, 1220 n.9 (TTAB 2008).
The present case presents a prime example of that, as Applicant has included with
the exhibits to its brief an “Exhibit 5,” consisting of the search results of the TESS
database for a search of all marks, without limitation as to class, containing the term

4 References to the record and briefs, unless otherwise noted, are to the record and briefs in
Application Serial No. 86430828. The appeals for Application Serial Nos. 86430828 and
86430839 were fully briefed; Applicant did not submit a reply brief for the appeal in Serial
No. 86430794.
Serial Nos. 86430828, 86430839 and 86430794
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GENESIS. Needless to say, we give this untimely evidence no consideration. See
Trademark Rule 2.142(d).5
II. Applicable Law
Our determination of the issue of likelihood of confusion under Section 2(d) of the
Trademark Act is based on an analysis of all of the probative facts in evidence that
are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc.,
315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003).
We concentrate our analysis on the cited registration for GENESIS PARTNERS
in standard characters (“Registrant’s Mark” or “Cited Registration”), as this mark
and services are the most similar to Applicant’s. If we affirm the refusals of
registration based on this mark, there is no need for us to consider the question of
likelihood of confusion with respect to the other cited registrations. Conversely, if we
do not find likelihood of confusion with respect to this mark, confusion is not likely
with respect to the other cited registrations. See In re Max Capital Group Ltd., 93
USPQ2d 1243, 1246 (TTAB 2010).
The services identified in the cited registration are “real estate services, namely,
managing real property”; Applicant’s services are identified, in part, as “building
management; management of apartments; real estate management of residential
rental properties and commercial properties; real estate management services.”

5 Even if this listing of search results were properly of record, it would not change our finding
herein. A mere listing of marks, without information about the goods or services, has no
probative value.
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Although the wording differs slightly, Applicant’s identified services would all be
encompassed by the “real estate services, namely managing real property” that is
identified in the cited registration.6 Accordingly, the services are, in part, legally
identical, and this du Pont factor strongly favors a finding of likelihood of confusion.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ
986, 988 (CCPA 1981) (likelihood of confusion must be found if there is likely to be
confusion with respect to any item that comes within the identification of goods or
services in the application). Further, because the services are legally identical, they
are presumed to travel in the same channels of trade. See 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). This du Pont factor,
too, favors a finding of likelihood of confusion.
Before we consider the du Pont factor of the similarity or dissimilarity of the
marks, we first address the question of the strength of the cited mark. Applicant has
submitted various pieces of evidence in order to support its contention that GENESIS
is “diluted and weak.” Brief, 8 TTABVUE 17. First, Applicant submitted a printout
from the Office’s TESS database showing 85 records that have the word or letter

6 We note that Applicant’s specific identification of “real estate management services” is
restricted to exclude “commercial and residential real estate agency services,” a restriction
that Applicant added in order to overcome the refusal based on the GENESIS FRANCHISE
ENTERPRISES registration. That restriction has no bearing on our consideration of
likelihood of confusion with the cited GENESIS PARTNERS registration; the exclusion of
real estate agency services does not limit the fact that Applicant’s services include managing
real property.
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string or pseudo mark GENESIS, e.g., HYDROGENESIS, G GENESISHR
SOLUTIONS, GENISYS INVESTMENT SERVICES. Many are for applications,
which have no probative value except to show that they were filed, and many
applications and registrations are listed as “dead.” By our count, there are only 19
“live” registrations in Class 36, three of which are the cited registrations. Moreover,
the search result list does not include the identification of services; all we can discern
from the exhibit is that the marks are for services in Class 36.7 In short, this list from
the TESS database has no probative value to show that GENESIS is a weak mark for
the real estate management services at issue herein.
Applicant also submitted registration certificates showing “a few examples of
marks containing ‘GENESIS.’”8 Of the registrations listed in this Exhibit 5, there are
four current registrations for GENESIS marks, two of which are owned by a single
party, and all four are for services that are different from those in the cited
registration:
Registration No. 4235072 is for “financial services, namely, debt
recovery and collection and debt management services; student loan
origination and servicing in connection with school-based student loan
programs; consumer credit origination and servicing in connection with
retail private label programs and gift card programs; and consumer
credit origination and servicing in connection with medical and dental
service private label programs”;

Registration No. 3862829 is for GENESIS FINANCIAL
TECHNOLOGIES INC for “financial services, namely, providing
information in the fields of foreign currency, commodities; financial

7 Merely submitting a list of marks and their registration numbers is not sufficient to make
the registrations of record.
8 Request for reconsideration filed January 28, 2015, pp. 34-39.
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derivatives, interest rate products, and equities via the internet and
intranet systems”;

Registration Nos. 3094388 and 1629450, both owned by the same
registrant, are for, respectively, GENESIS (stylized) for “property
insurance underwriting services; casualty insurance underwriting
services; reinsurance underwriting services” and for GENESIS
(standard characters) for “casualty and property insurance and
reinsurance underwriting services.”9

Applicant also made of record, as Exhibits 6 and 7 to its request for
reconsideration, two pairs of third-party registrations in an attempt to show that
GENESIS marks can coexist for similar services:
GENESIS CREDIT was registered for “credit services, namely,
providing consumer credit origination and servicing in connection with
retail private label programs” on December 25, 2012; and

CREDIT GENESIS was registered for “financial services, namely, fund
investment services in the field of collateralized loan obligations;
investment management services; asset management services” on
December 12, 2016. This registration was cancelled in 2013 for failure
to file a Section 8 affidavit of use, but the registrations did coexist for a
few months.10

Registration No. 3862829 for GENESIS FINANCIAL
TECHNOLOGIES, listed above, was registered on October 19, 2010, and
coexisted with Registration No. 2888999 for “financial services, namely,
debt recovery and collection and debt management services” which was
registered on September 28, 2004. This registration expired on May 1,
2015, but the registrations coexisted on the Register for almost five
years.11

Whether or not the third-party registrations show that GENESIS has been
commonly adopted for financial or insurance services, they do not show that

9 The fifth registration, No. 1788697, was cancelled in 2000 for failure to file a Section 8
affidavit.
10 Request for reconsideration filed January 28, 2016, pp. 40-42.
11 Id. at 43-45.
Serial Nos. 86430828, 86430839 and 86430794
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GENESIS is a weak mark for real estate management services, or that the cited
registration is entitled to only a limited scope of protection. In fact, the only evidence
we have before us of more than one GENESIS mark in the real estate field is the
presence of the two cited GENESIS PARTNERS registrations and the cited
GENESIS FRANCHISE ENTERPRISE registration. For purposes of considering the
strength of Registration No. 3256759, the cited registration on which we are basing
our analysis, we treat the GENESIS FRANCHISE ENTERPRISES as a third-party
mark. However, we cannot deem the term GENESIS to be weak based on this single
third-party registration for real estate agency services. Based on the record herein,
we must consider the mark GENESIS PARTNERS to be a relatively strong mark for
real estate management services.12
Having determined that the cited registration is entitled to a normal scope of
protection, we proceed to a consideration of whether Applicant’s marks are
confusingly similar to the mark GENESIS PARTNERS in standard characters. In
undertaking this analysis, we keep in mind that when marks are used in connection
with virtually identical goods or services, as they are here, the degree of similarity
necessary to support a conclusion of likely confusion declines. In re Viterra Inc., 101
USPQ2d at 1912 (Fed. Cir. 2012); Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992). In addition, there is

12 We have discussed in this opinion the registrations that Applicant made of record. We must
assume that Applicant singled out these registrations as being the ones that were most
favorable to its position. Cf. In re Federated Dept. Stores Inc., 3 USPQ2d 1541, 1542 n.2
(TTAB 1987).
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nothing improper in stating that, for rational reasons, more or less weight has been
given to a particular feature of a mark, provided the ultimate conclusion rests on a
consideration of the marks in their entireties. In re National Data Corp., 753 F.2d
1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
We first compare Applicant’s standard character mark, GENESIS INVESTMENT
PROPERTIES, with GENESIS PARTNERS, also in standard characters. The first
word in the marks, GENESIS, is identical. The additional words INVESTMENT
PROPERTIES in Applicant’s mark, and PARTNERS in the registrant’s mark, are
descriptive, and have been disclaimed. That is, INVESTMENT PROPERTIES tells
consumers the subject matter of Applicant’s services, and PARTNERS tells them of
the nature of the registrant’s entity. Because these terms are descriptive, consumers
will view the word GENESIS as the portion of the marks with the source-indicating
significance. Further, as the first word in the marks, GENESIS is a prominent feature
of the marks, and therefore prominent in the commercial impression created by the
marks. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Therefore, we find that
GENESIS is the dominant feature of the marks, and gives the marks an overall
similarity. Id. (presence of distinctive term as first word in both parties’ marks
renders the marks similar, especially because of laudatory non-source identifying
significance of word ROYALE in applicant’s mark). In short, although there are
differences in the marks due to the different descriptive wording in each, these
descriptive words are not sufficient to distinguish the marks when used for identical
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services. When the marks are compared in their entireties, overall they are similar
in appearance, pronunciation, connotation and commercial impression.
We next consider the similarity of Applicant’s mark GENESIS and design, shown
below,

and GENESIS PARTNERS. Our comments in the preceding paragraph regarding the
descriptive words in each mark also apply here. If anything, the small size of the
words INVESTMENT PROPERTIES in Applicant’s mark makes the term even less
likely to be noticed by consumers; clearly, the word GENESIS is the most prominent
literal element in the mark. Applicant has gone into some detail describing the
molecule design in its mark, but the design element has far less prominence than the
word GENESIS, which is in large letters and bold type. More importantly, because
consumers are likely to refer to the mark or call for the services by the word
GENESIS, this word is the dominant part of the mark. In re Kysela Pere et Fils Ltd.,
98 USPQ2d 1261, 1267 (TTAB 2011); In re Appetito Provisions Co., 3 USPQ2d 1553,
1554 (TTAB 1987). See also In re Shell Oil Co., 992 F.2d 1204, 26 USPQ 2d 1687,
1688 (Fed. Cir. 1993). Applicant has argued that the “I” is GENESIS forms one of the
chemical bonds connecting the atoms, and therefore incorporates the literal words of
Applicant’s mark with the design. We are not persuaded that consumers for these
services would view the letter “I” in this way. The services are real estate
management services, not services that would be marketed to scientists or chemists.
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There is nothing in the record to indicate that the usual consumers for the identified
services are attuned to pictorial representations of atoms, and would recognize the
“I” as a chemical bond, especially since the “I” appears in the same font and size as
the rest of the letters in GENESIS, thereby appearing as merely a normal letter
within the word, and because the “I” is not attached to any atoms, the way that the
other chemical bonds are. Thus, although the molecule design provides a point of
difference between Applicant’s mark and the GENESIS PARTNERS mark, we find
that this difference is not sufficient to distinguish the marks. When these marks are
used in connection with legally identical services, consumers who are familiar with
the registrant’s GENESIS PARTNERS mark are likely to assume that Applicant’s
mark is a variation of that mark, indicating source of the services in the same entity.
The same reasoning applies to our consideration of Applicant’s GENESIS and gold
design mark, shown below.

The only difference between this mark and the GENESIS and design mark is that
color is claimed for this mark. However, because the cited mark is registered in
standard characters, it is not limited to any particular font, size, style or color. In re
Viterra Inc., 101 USPQ2d at 1909. Therefore, the gold, black and white colors in which
Applicant’s mark is displayed do not act as distinguishing features; the registrant’s
mark may also be displayed in gold letters, or, for example, letters combining the
colors gold and black, on a white background.
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After comparing each of Applicant’s marks with the registrant’s mark GENESIS
PARTNERS, and considering them in their entireties, we find that each of Applicant’s
marks is similar to the registrant’s mark in appearance, pronunciation, connotation
and commercial impression. Although there are specific differences in the marks,
these differences are not sufficient to distinguish Applicant’s marks from the
registrant’s mark. The points of similarity far outweigh the points of difference.
Accordingly, we find that the du Pont factor of the similarity of the marks favors a
finding of likelihood of confusion.
The last du Pont factor that Applicant has discussed is the conditions under which
and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated
purchasing. Applicant asserts that consumers of property management services are
real property investors, and “those consumers who need property management
services … to maintain their properties, will take great care when choosing a
management company because they are responsible for the well-being of the tenants
and have invested significant amount of money into their properties.” Brief, 8
TTABVUE 22. It is not clear to us that those “who invest large sums of money in
property,” id., are the only consumers of property management services, as opposed
to, for example, an individual who owns a single condominium as a rental property
and hires a management agent for it. Or that members of the general public who rent
apartments would not come in contact with the management company for the
apartment building, such that, if Applicant’s services were found unacceptable, there
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could be reverse confusion, and those renters may be deterred from renting an
apartment in a building that the registrant manages.
Even accepting Applicant’s scenario that the only consumers who would come into
contact with real estate management services are sophisticated and careful
purchasers, because of the similarity of the marks and the identity of the services,
even such purchasers are likely to believe that Applicant’s marks identify services
emanating from the same source as GENESIS PARTNERS real estate management
services. See HRL Associates, Inc. v. Weiss Associates, 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). This du Pont factor therefore is neutral.
After considering all the relevant du Pont factors,13 we find that Applicant’s marks
are likely to cause confusion with the mark GENESIS PARTNERS which is the
subject of Registration No. 3256759, and the refusals of registration of all three marks
is affirmed on this basis. In view thereof, we need not consider the issue of likelihood
of confusion with respect to the other cited registrations.
Decision: The refusal to register Applicant’s marks GENESIS INVESTMENT
PROPERTIES in standard characters (Application Serial No. 86430794), GENESIS
INVESTMENT PROPERTIES and design (Application Serial No. 86430839) and

13 To the extent that any du Pont factors other than those we have discussed are deemed
relevant, we treat them as neutral.
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GENESIS INVESTMENT PROPERTIES and gold design (Application Serial No.
86430828) are affirmed.