Polaris Executive Center, LLC d/b/a Genesis Biotechnology Group

Trademark Trial and Appeal Board

Sep 10, 2021

88624647 (T.T.A.B. Sep. 10, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 10, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Polaris Executive Center, LLC d/b/a Genesis Village
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Serial Nos. 88624647
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Arnold Braun of the Genesis Biotechnology Group,
for Polaris Executive Center, LLC.
James Hill, Trademark Examining Attorney, Law Office 115,
Daniel Brody, Managing Attorney.
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Before Bergsman, Lykos and Hudis,
Administrative Trademark Judge

Opinion by Lykos, Administrative Trademark Judge:

Polaris Executive Center, LLC d/b/a Genesis Village (“Applicant”) seeks to
register on the Principal Register the composite mark displayed below

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(“VILLAGE” disclaimed) for, as amended, “apartment and office rentals” in
International Class 36.1 The description of the mark is as follows:
The mark consists of the stylized wording “GV” inside a shaded circle
above which is an ornamental design resembling an ankh, and to the
left and right of which are a highly stylized framework of ornamental
scrollwork. Below the design is the wording “GENESIS VILLAGE”. All
of the foregoing elements appear in black, and all instances of captive
white in the mark represent background or transparent areas and are
not claimed as a feature of the mark.

Registration was refused under Section 2(d) of the Trademark Act, 15 U.S.C.
§ 1052(d), on the ground that Applicant’s applied-for mark so resembles the
registered standard character mark GENESIS PARTNERS2 and the registered
stylized mark displayed below,3

(“PARTNERS” disclaimed in each registration), both owned by the same entity for
“real estate services, namely, managing real property” in International Class 36, that

1 Application Serial Nos. 88624647 was filed on September 20, 2019 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), claiming March 6, 2019 as the date of first use anywhere
and in commerce During prosecution, Applicant deleted “real estate development” in
International Class 37 following a specimen refusal.

Citations to the prosecution file refer to the USPTO’s Trademark Status & Document
Retrieval (“TSDR”) system and identify documents by title and date. Specific citations are to
the page number of the TSDR records. References to the briefs and other materials in the
appeal record refer to the Board’s TTABVUE docket system.

2 Registration No. 3256759, registered June 26, 2007 on the Principal Register; renewed.

3 Registration No. 3254018, registered June 19, 2007 on the Principal Register; renewed.
Color is not claimed as a feature of the mark.
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it is likely to cause confusion or mistake or to deceive. Registration also was refused
under Trademark Act Section 2(d) based on the registered standard character mark
GV for services including “Real estate and real property services, namely, acquisition,
agency, and brokerage; Real estate and real property services, namely, management
and leasing” in International Class 36 owned by a different entity.4
In an effort to circumvent the Section 2(d) refusal, during prosecution Applicant
amended its International Class 36 services to the following:5
Apartment and office rentals but not including the
following, real estate services, namely managing real
property; real estate and real property services, namely
managing real property; real estate, acquisition, agency
and brokerage; real estate and real property services,
namely, management and leasing.
The Examining Attorney explained that Applicant’s proposed amendment was
unacceptable because the wording “real estate and real property services, namely
managing real property; real estate, acquisition, agency and brokerage; real estate
and real property services, namely, management and leasing” was beyond the scope
of the original identification because the wording included services beyond the scope
of those originally identified.6 Applicant rectified this by amending its International
Class 36 services as originally stated.7

4 Registration No. 4604136 was registered September 16, 2014 on the Principal Register;
Trademark Act Sections 8 and 15 combined declaration accepted and acknowledged.
5 February 24, 2020 Response to Office Action.
6 March 18, 2020 Office Action.
7 August 10, 2020 Response to Office Action.
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When the Section 2(d) refusal was made final, Applicant appealed and filed a
request for reconsideration which was denied. The appeal is fully briefed.
I. Evidentiary Issue
Before addressing the substance of this appeal, we consider the Examining
Attorney’s objection to Applicant’s references in its appeal brief to third-party
registrations and applications.8 During prosecution, on three separate occasions,
Applicant submitted a listing instead of submitting copies of each registration or
application showing current status and title from either the electronic records of the
Office or the paper USPTO record: first, in its February 24, 2020 Office Action
response; then, in its July 10, 2020 Office Action response as Exhibit 2; and finally,
with its Request for Reconsideration dated January 18, 2021. Each time, the
Examining Attorney advised Applicant that the mere listing of third-party
registrations does not make the registrations of record.9
The objection is sustained. The record in an application should be complete prior
to the filing of an appeal. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d). The
Examining Attorney apprised Applicant multiple times that the registrations were
not properly made of record, yet Applicant chose to ignore the Examining Attorney’s
admonitions. Hence, we give Applicant’s lists of third-party registrations no
consideration. See In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1744 (TTAB 2018),
aff’d mem., 777 F. App’x (Fed. Cir. 2019); In re Fiat Grp. Mktg. & Corp. Commc’ns

8 Applicant’s Appeal Brief, pp. 17-18; 6 TTABVUE 18-19.
9 See Office Actions dated March 18, 2020 and August 4, 2020, and Denial of the Request for
Reconsideration dated February 9, 2021.
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S.p.A, 109 USPQ2d 1593, 1596 (TTAB 2014). See also TRADEMARK TRIAL AND APPEAL
BOARD MANUAL OF PROCEDURE (“TBMP”) § 1208.02 (2021).
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 a likelihood of confusion. In re E. I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also In re
Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We
must consider each DuPont factor for which there is evidence and argument. In re
Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). When
analyzing these factors, the overriding concerns are not only to prevent buyer
confusion as to the source of the services, but also to protect the registrant from
adverse commercial impact due to use of a similar mark by a newcomer. See In re
Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993).
In any likelihood of confusion analysis, two key considerations are the
similarities between the marks and the similarities between the services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
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 discuss these factors and others below as they pertain to the cited
marks.
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A. Cited Mark GV in Registration No. 4604136
First, we direct our attention to the cited standard character mark GV for “Real
estate and real property services, namely, acquisition, agency, and brokerage; Real
estate and real property services, namely, management and leasing” in International
Class 36.” We preface our discussion with axiom that “[n]o mechanical rule
determines likelihood of confusion, and each case requires weighing of the facts and
circumstances of the particular mark.” In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1259 (Fed. Cir. 2010).
In some cases, a single DuPont factor may be dispositive, and when we compare
the marks, we find that to be the case here. See Kellogg Co. v. Pack’em Enterprises
Inc., 951 F.2d 330, 21 USPQ2d 1142 (Fed. Cir. 1991). The first DuPont likelihood of
confusion factor involves an analysis of the similarity or dissimilarity of the marks in
their entireties as to appearance, sound, connotation and commercial impression. See
Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396
F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). “The proper test is not a side-by-side
comparison of the marks, but instead ‘whether the marks are sufficiently similar in
terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012).
The Examining Attorney takes the position that the marks as a whole create a
similar commercial impression, focusing on the GV element in Applicant’s composite
mark. Relying on the principle that incorporating the entirety of one mark within
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another does not obviate the similarity between the compared marks as articulated
in Wella Corp. v. Cal. Concept Corp., 558 F.2d 1019, 194 USPQ 419, 422 (CCPA 1977),
the Examining Attorney argues that the marks are similar because they each share
the term GV and that consumers are likely to view Applicant’s mark as an extension
of Registrant’s brand.
The similarities stop there. When we compare the marks as a whole, we find them
to be dissimilar in sound, appearance, connotation and commercial impression.
Regarding Applicant’s composite mark, we are guided by the anti-dissection rule –
requiring that we consider the respective marks in their entireties. In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). GV as it appears in
Applicant’s composite mark is stylized to such a high degree that it blends
harmoniously next to the framework of the ornamental scrollwork, making it barely
perceptible to prospective consumers. By contrast, the wording “Genesis Village” is
displayed prominently below in large lettering, making this wording the dominant
element. Such wording evokes a distinct connotation and commercial impression from
GV standing alone. Thus we find critical the distinctions between the marks in sound,
appearance, connotation and commercial impression.
The dissimilarity of the marks in appearance, meaning and commercial
impression are so great as to outweigh any other relevant DuPont factors, even
assuming they each weighed in favor of finding a likelihood of confusion. For that
reason, we find the first DuPont factor to be pivotal, and the Examining Attorney’s
Section 2(d) refusal is reversed as to the cited standard character mark GV in
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Registration No. 4604136. See, e.g., Oakville Hills Cellar, Inc. v. Georgallis Holdings,
LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed. Cir. 2016) (“a single du Pont factor
may be dispositive in a likelihood of confusion analysis, especially when that single
factor is the dissimilarity of the marks”).
B. Cited Marks GENESIS PARTNERS in Registration Nos. 3256759 and
3254018

Having determined that the cited standard character mark GV does not present
a likelihood of confusion under Section 2(d), we now consider the remaining cited
registrations: the standard character mark GENESIS PARTNERS and its stylized
counterpart. We concentrate our analysis on the registered standard mark GENESIS
PARTNERS identified in Registration No. 3256759 for “real estate services, namely,
managing real property.” If likelihood of confusion is found as to this registration, it
is unnecessary to consider the other cited registration for the stylized mark for the
same services. Conversely, if likelihood of confusion is not found, we would not find
likelihood of confusion as to the other cited registration. See, e.g., In re Max Capital
Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
1. Strength of the Cited Mark
In determining the strength of a mark, we consider both its inherent strength,
based on the nature of the mark itself, and, if there is evidence in the record of
marketplace recognition of the mark, its commercial strength. See In re Chippendales
USA, Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength
is measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”); 2 J. Thomas McCarthy, MCCARTHY ON TRADEMARKS
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AND UNFAIR COMPETITION § 11:80 (5th ed. September 2021 update) (“The first enquiry
focuses on the inherent potential of the term at the time of its first use. The second
evaluates the actual customer recognition value of the mark at the time registration
is sought or at the time the mark is asserted in litigation to prevent another’s use.”).
Applicant postulates that the term GENESIS in the cited registration is entitled
to only a narrow scope of protection. In this case, Applicant has introduced no third-
party uses pertaining to the diminished commercial strength of the cited mark.
Rather, Applicant challenges the inherent or conceptual strength of the GENESIS
component of the cited mark, citing two third-party registrations incorporating the
term GENESIS in their respective marks: Registration No. 2921251 for the mark
GENESIS OF STYLE for “operating marketplaces for sellers of real estate and/or real
estate services,” and Registration No. 6330096 for the mark INFINITE GENESIS
UNITED LLC for “real estate agency services; real estate listing services for housing
rentals and apartment rentals; real estate procurement for others; real estate
brokerage; real estate listing; commercial and residential real estate agency services;
residential real estate agency services.”10 Based on this evidence, Applicant contends
that the cited mark is entitled to only a narrow scope of protection.
The inherent or conceptual strength of Registrant’s mark is not seriously at issue.
Registrant’s mark GENESIS PARTNERS is inherently distinctive as evidenced by
its registration on the Principal Register without a claim of acquired distinctiveness
under Section 2(f) of the Trademark Act. Tea Bd. of India, 80 USPQ2d at 1889. See

10 January 18, 2021 Request for Reconsideration, pp. 63-64.
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also New Era Cap Co., Inc. v. Pro Era, LLC, 2020 USPQ2d 10596 (TTAB 2020).
Registrant’s registration is “prima facie evidence of the validity of the registered mark
....’’ Section 7(b) of the Trademark Act, 15 U.S.C. § 1057(b).
Furthermore, the record is devoid of evidence that GENESIS is a term of art in the
real property management industry. In the absence of such evidence, third-party
registrations alone may be relevant, in the manner of dictionary definitions, “to prove
that some segment of the [marks] has a normally understood and well recognized
descriptive or suggestive meaning, leading to the conclusion that that segment is
relatively weak.” Juice Generation, 115 USPQ2d at 1675 (internal quotation marks
omitted). See also Jack Wolfskin, 116 USPQ2d at 1135-36. Here, however, we have
minimal third-party registration evidence that might demonstrate the inherent
weakness of this element of the cited mark as a source identifier.11 Thus, the
GENESIS component in the cited mark for the identified services is inherently
distinctive and Applicant has not shown that the mark has been weakened.
2. The Marks

As noted above, the first DuPont likelihood of confusion factor involves an
analysis of the similarity or dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression. Palm Bay Imps., 73
USPQ2d at 1692 (citing DuPont, 177 USPQ at 567). “Similarity in any one of these
elements may be sufficient to find the marks confusingly similar.” In re Inn at St.

11 By contrast, in Juice Generation, there were at least twenty-six relevant third-party uses
or registrations of record, see 115 USPQ2d at 1672 n.1, and in Jack Wolfskin, there were at
least fourteen, 116 USPQ2d at 1136 n.2.
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John’s, 126 USPQ2d at 1746. Accord Krim-Ko Corp. v. Coca-Cola Bottling Co., 390
F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either
form, spelling or sound alone is likely to cause confusion.”) (citation omitted). “The
proper test is not a side-by-side comparison of the marks, but instead ‘whether the
marks are sufficiently similar in terms of their commercial impression’ such that
persons who encounter the marks would be likely to assume a connection between
the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1721.
Because the similarity or dissimilarity of the marks is determined based on the marks
in their entireties, the analysis cannot be predicated on dissecting the marks into
their various components; that is, the decision must be based on the entire marks,
not just part of the marks. Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re Nat’l Data Corp., 224 USPQ
at 751. See also Franklin Mint Corp. V. Master Mfg. Co., 667 F.2d 1005, 212 USPQ
233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and
considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion”). “On the other hand, in articulating reasons for reaching a
conclusion on the issue of confusion, there is 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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be unavoidable.” In re Nat’l Data
Corp., 224 USPQ at 751.
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We now compare Applicant’s composite with the cited standard character mark
GENESIS PARTNERS. Concentrating first on the differences in appearance,
Applicant argues that its composite mark offers a “creative design” in terms of
stylized wording as well as an “artistic” rendering of the letters “GV” in a circle, “with
an ankh above the circle, above an ornate gate with elegant scrollwork.”12 Continuing
with this theme, Applicant submits that the “ornate gate invites consumers to ‘open
it’ and enter into a ‘Village,’” and that “Applicant intended this gate to connote a
‘wrought iron gate’ leading to a ‘Village’ - i.e. a place to live and work for consumers.”13
As to sound, meaning and commercial impression, although Applicant acknowledges
that both marks share the same term GENESIS, it argues that the marks differ
significantly due to the differences in the words VILLAGE and PARTNERS.
Applicant asserts that VILLAGE, not GENESIS, is the dominant term in its mark,
and that the marks project different meanings when considered in relation to the
identified services. In Applicant’s view, the word “village” “conveys a place for people
to live and work,” an implicit reference to Applicant’s apartment rental services.14 By
contrast, “partners” “conveys a business relationship between business persons or
entities, anything but a “village.”15 As support for its position, Applicant points to the
following definitions of “village” and “partner” from MERRIAM-WEBSTER:16

12 Applicant’s Brief, p. 4; 6 TTABVUE 5.
13 Id.
14 Applicant’s Brief, pp. 5-6; 6 TTABVUE 6-7.
15 Id.
16 January 18, 2021 Office Action, pp. 6 and 16 (www.merriam-webster.com).
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Applicant’s arguments are unconvincing. Applicant’s composite mark and the
cited standard character mark share the same word GENESIS which is arbitrary in
relation to the services. In terms of literal elements, the only distinctions are the
addition of the term GV in Applicant’s mark and disclaimed words VILLAGE and
PARTNERS in each mark. As noted above, the high degree of stylization of the
lettering GV in the same style as the scrollwork makes it less noticeable to
prospective consumers. To the extent consumers notice the stylized letters GV, they
will associate them as the initials for GENESIS VILLAGE.
With regard to the terms VILLAGE and PARTNERS, disclaimed, merely
descriptive matter, such as the word “Partners” indicating Registrant’s legal status,
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generally is not source-indicating and does not constitute the dominant part of a
mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846
(Fed. Cir. 2000) (quoting In re Nat’l Data Corp., 224 USPQ at 752); In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code
Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often
“less significant in creating the mark’s commercial impression”). We acknowledge
that each word conveys different meanings. Nonetheless, the difference in meaning
between “village” and “partners” does not rise to the level of changing the overall
connotation and commercial impression of the marks GENESIS VILLAGE and
GENESIS PARTNERS. See In re Denisi, 225 USPQ 624, 624 (TTAB 1985) (“[I]f the
dominant portion of both marks is the same, then confusion may be likely
notwithstanding peripheral differences.”).
In addition, with respect to Applicant’s mark, we find the stylized lettering and
design element subordinate to the prominently displayed wording GENESIS
VILLAGE. It is an often-recited principle that when a mark consists of a literal
portion and a design portion, the literal portion is usually more likely to be impressed
upon a purchaser’s memory and to be used in calling for the goods or services;
therefore, the literal portion is normally accorded greater weight in determining
whether marks are confusingly similar. See, e.g., In re Viterra, Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1911 (Fed. Cir. 2012); In re Dakin’s Miniatures, Inc., 59 USPQ2d
1593, 1596 (TTAB 1999). See also CBS Inc. v. Morrow, 708 F.2d 1579, 1581-82, 218
USPQ 198, 200 (Fed. Cir. 1983); In re Kysela Pere et Fils, Ltd., 98 USPQ2d 1261,
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1267-68 (TTAB 2011). As the first prominent word, prospective consumers are likely
to concentrate on GENESIS.
As noted above, the Board has the discretion to place more weight on a particular
feature of a mark, provided the ultimate conclusion rests on a consideration of the
marks in their entireties. In re Nat’l Data, 224 USPQ at 751. See, e.g., In re Dixie
Rests., Inc., 41 USPQ2d at 1533-34. Accordingly, we agree with the Examining
Attorney that GENESIS, as the arbitrary term in each mark, is the dominant portion
in both. See In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed.
Cir. 2018) (finding “the identity of the marks’ two initial words is particularly
significant because consumers typically notice those words first”); Palm Bay Imps.,
73 USPQ2d at 1692 (finding similarity between VEUVE ROYALE and two VEUVE
CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the
first word in the mark and the first word to appear on the label”). See also In re Denisi,
225 USPQ 624, 624 (TTAB 1985) (“[I]f the dominant portion of both marks is the
same, then confusion may be likely notwithstanding peripheral differences.”).
Consumers are likely to perceive Applicant’s mark GENESIS VILLAGE as a
variation of the cited mark GENESIS PARTNERS, notwithstanding the difference in
meaning between “village” and “partners.” The differences between the marks fail to
distinguish them.
The differences we have noted in the marks are outweighed by their similarities.
Thus, when comparing the marks overall, they are similar in sight, sound,
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connotation and commercial impression. We find this DuPont factor weighs in favor
of finding a likelihood of confusion.
3. The Services
Next, we compare the services as they are identified in the involved application
and cited registration which in the case are “apartment and office rentals” and “real
estate services, namely, managing real property.”17 See In re Detroit Athletic Co., 128
USPQ2d at 1052; Stone Lion, 110 USPQ2d at 1161 and Hewlett-Packard Co. v.
Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002). The services
need not be identical or even competitive to find a likelihood of confusion. On-line
Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir.
2000); Recot, Inc. v. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000).
They need only be “related in some manner and/or if the circumstances surrounding
their marketing are such that they could give rise to the mistaken belief that [the
services] emanate from the same source.” Coach Servs., Inc. v. Triumph Learning
LLC, 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d 1715, 1724
(TTAB 2007)). Evidence of relatedness may include news articles and/or evidence
from computer databases showing that the relevant services are used together or
used by the same purchasers; advertisements showing that the relevant services are

17 For this reason, Applicant’s argument that Registrant is a real estate investor and
developer is unavailing. Octocom Sys., Inc. v. Hous. Comput. Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990) (“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 [and cited registration] regardless of what the record may reveal
as to the particular nature of an applicant’s [or registrant’s] goods, the particular channels of
trade or the class of purchasers to which sales of the goods are directed.”).
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advertised together or sold by the same manufacturer or dealer; and/or copies of prior
use-based registrations of the same mark for both applicant’s services and the
services listed in the cited registration. See, e.g., In re Davia, 110 USPQ2d 1810, 1817
(TTAB 2014) (finding pepper sauce and agave related where evidence showed both
were used for the same purpose in the same recipes and thus consumers were likely
to purchase the products at the same time and in the same stores).
Applicant argues that during prosecution it amended its original identification to
eliminate the services from the cited registration, and that the Examining Attorney
now improperly conflates Applicant’s services as being subsumed within Registrant’s.
As Applicant contends:
The examining attorney argued that Cited Marks’
identification is so broadly worded as to subsume
Applicant’s goods and services. However, as explained
below, the Registrant amended its identification by
narrowing its goods and services, so as not to be so broadly
worded. Further, in his review the examining attorney
applied the broader global real estate industry to the
Parties’ services. By doing this, he equated offering real
property management services for a fee to consumers to
offering apartment rentals to consumers. They are not
equated nor are they related. This approach failed to
understand the important differences between these two.
Moreover, the case law requires a different standard, not a
broad standard of an entire industry.
Finally, the extrinsic evidence used by the examining
attorney to show related services is fundamentally flawed
and must be rejected. This evidence showed entities
“buying and selling real estate” on behalf of third parties.
Registrant’s amendments to its description of services and
goods specifically, deleted the terms “buying and selling of
real estate” during prosecution. This deletion makes the
evidence nonprobative because it doesn’t represent
Registrant’s goods and services. Absent this evidence the
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Applicant respectfully asks this Board to grant registration
since no proof of related services of the Parties exists.18
Applicant’s arguments are belied by the record evidence.
As explained earlier, Applicant’s attempt to exclude the services in the cited
registration was rejected because none of those services were subsumed in the
original identification. This constituted an implicit acknowledgment on the part of
the Examining Attorney that Applicant’s and Registrant’s services are not identical
and that evidence must be introduced to demonstrate that the services are related.
With that objective in mind, to show that Applicant’s “apartment and office rentals”
and Registrant’s “real estate services, namely, managing real property” are related,
the Examining Attorney submitted website evidence to show that it is not uncommon
for the same entity to provide both services identified in the application and cited
registration under the same mark and that such services are complementary in
nature. By way of illustration, we note the following website excerpts from A Better
Property Management Co., Inc.; Dodson Property Management; Haven Property
Management; Liberty Property Management; Real Property Management Colorado;
K&A; Long and Foster; and H Home River Group Memphis showing the provision of
both property management services and apartment and/or office rentals.19

18 Applicant’s Appeal Brief, p. 7; 6 TTABVUE 8.
19 December 21, 2019 Office Action, pp. 25-33 and August 4, 2020, pp. 2-12.
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Serial No. 88624647
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In addition, our determination is bolstered by the following use-based,
third-party registrations introduced by the Examining Attorney showing that the
same entity has registered a single mark identifying the legal equivalent20 of at least
one of Applicant’s services and Registrant’s services.21

Reg. No. Mark Relevant Class 36 Services
5620580 BOAVIDA real estate rental services, namely, rental of
residential housing; real estate services, namely,
property management services for condominium
associations, homeowner associations and
apartment buildings; real estate services, namely,
rental, brokerage, leasing and management of
commercial property, offices and office space;
building management; management of buildings;
rental of real estate
5672733 AIKANIC
REALTY &
DESIGN
real estate services, namely, rental, brokerage,
leasing and management of commercial property,
offices and office space; building management
5737994 THE ISKUS
GROUP &
DESIGN
apartment and office rental; real estate services,
namely, rental, brokerage, leasing and
management of commercial property, offices and
office space; real estate service, namely, rental
property management; real estate services,
namely, property management services for
condominium associations, homeowner
associations and apartment buildings; real estate
services, namely, rental of short term furnished
apartments
5815489 ONE DAY
LISTING
real estate services, namely, rental, brokerage,
leasing and management of commercial property,
offices and office space
5744132 PINK REALTY
& DESIGN
real estate service, namely, rental property
management; real estate services, namely,
property management services for condominium

20 Because the benefits of registration are commensurate with the scope of the goods specified
in the certificate of registration, a registration that describes goods broadly is presumed to
encompass all goods or services of the type described. See Stone Lion, 110 USPQ2d at 1161.
21 August 4, 2020, Office Action pp. 17-49.
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Reg. No. Mark Relevant Class 36 Services
associations, homeowner associations and
apartment buildings
6007880 CAMPBELL
SKYE
real estate service, namely, rental property
management; real estate services, namely,
property management services for condominium
associations, homeowner associations and
apartment buildings
6067392 CAROLINA
MOVES &
DESIGN
real estate service, namely, rental property
management; real estate services, namely,
property management services for condominium
associations, homeowner associations and
apartment buildings; real estate services, namely,
rental of short-term furnished apartments; real
estate services, namely, rental, brokerage, leasing
and management of commercial property, offices
and office space
6078846 SAN DIEGO
STEVE
Real estate service, namely, rental property
management; real estate services, namely, rental
of short-term furnished apartments
Third-party registrations that cover goods and services from both the cited
registration and an Applicant’s application are relevant to show that the goods and
services are of a type that may emanate from a single source under one mark. See,
e.g., Detroit Athletic, 128 USPQ2d at 1051; Hewlett-Packard Co. v. Packard Press,
Inc., 62 USPQ2d at 1004; In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18
(TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993).
Thus contrary to Applicant’s assertions, the Examining Attorney’s evidence is indeed
probative and demonstrates that the involved services are related. As such, we find
this DuPont factor supports a finding of a likelihood of confusion.

4. Trade Channels
We now direct our attention to the established, likely-to-continue channels of
trade, the third DuPont factor. Because the identifications in the application and
cited registration for the mark have no restrictions on channels of trade, we must
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presume that the services of Applicant and Registrant travel in all channels of trade
appropriate for such services, which the record as summarized above shows includes
real estate brokerage firms. See In re Viterra, 101 USPQ2d at 1908 (quoting Hewlett-
Packard Co. v. Packard Press, Inc., 281 62 USPQ2d at 1005). In addition, as indicated
by the record evidence, both Applicant’s and Registrant’s services may be encountered
by the same prospective consumers, namely renters of office and apartment space.
As such, the DuPont factor regarding the similarity or dissimilarity of
established, likely to continue trade channels also favors a finding of likelihood of
confusion.
5. Conditions of Purchase
Lastly, we consider the fourth DuPont factor, the conditions under which the
services are likely to be purchased, e.g., whether on impulse or after careful
consideration, as well as the degree, if any, of sophistication of the consumers.
Purchaser sophistication or degree of care may tend to minimize likelihood of
confusion. Conversely, impulse purchases of inexpensive items may tend to have the
opposite effect. Palm Bay, 73 USPQ2d at 1695.
Applicant argues that consumers of its services exercise a high degree of care
because apartment rentals are expensive and require substantial security deposits;
they require consumers to sign leases which are legally binding; and they require on
the part of Applicant background and credit checks of prospective tenants.22
We agree with Applicant that the evidence shows that consumers will exercise a

22 See Declaration of Phillip Stephano, Property Manager submitted with Applicant’s
January 18, 2021 Request for Reconsideration, pp. 2-3.
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high degree of care when comparing and deciding on apartment rentals. Although the
evidence does not speak to either the rental of office space or management of real
property, we can extrapolate that the same considerations would apply. Such
decisions are not casual, impulse purchases. This factor therefore weighs against
finding a likelihood of confusion.
6. Balancing the Factors
We have considered all evidence made of record, as well the arguments related
thereto. Consumer care weighs against finding a likelihood of confusion. However,
with highly similar marks and related services marketed in the same trade channels,
even a careful consumer is not likely to understand that the services emanate from
different sources. See, e.g., In re Johns-Manville Corp., 180 USPQ 661, 662 (TTAB
1973) (“While the average purchaser of [building doors and asphalt shingles] may be
skilled craftsmen, it does not necessarily follow therefrom that they are equally
informed as to the source of the products that they use and are, unlike customers for
other products, immune from the likelihood of confusion or deception that the statute
is attempting to preclude.”). These findings lead us to the conclusion that prospective
consumers are likely to confuse the source of the involved services as to cited
Registration No. 3256759.
Decision: The Trademark Act Section 2(d) refusal is reversed in part and
affirmed in part.