RE/MAX Int’l., Inc.v.Realtymax, Inc.

Trademark Trial and Appeal Board

Oct 19, 2000

No. 91111647 (T.T.A.B. Oct. 19, 2000)

10/19/00 Paper No. 16
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
RE/MAX International, Inc.
v.
Realtymax, Inc.
_____
Opposition No. 111,647
to application Serial No. 75/347,525
filed on August 26, 1997
_____
John R. Posthumus, George G. Matava and Nancy Dempsey of
LeBoeuf, Lamb, Greene & MacRae for RE/MAX International,
Inc.
David P. Bellino for Realtymax, Inc.
______
Before Hairston, Walters and Wendel, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An application has been filed by Realtymax, Inc. to
register the mark REALTYMAX for services which are
identified as “real estate brokerage, management and
investment.”1
Registration has been opposed by RE/MAX International,
1 Serial No. 75/347,525 filed August 26, 1997, based upon
applicant’s alleged bona fide intention to use the mark in
commerce.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 111,647
2
Inc. on the ground of likelihood of confusion between
applicant’s mark and opposer’s previously used and
registered mark RE/MAX for “rendering technical aid and
assistance to others in the establishment and operation of a
real estate brokerage agency” and “real estate brokerage
services.”2
Applicant, in its answer, denied the allegations with
respect to likelihood of confusion.
The record consists of the pleadings; the file of the
involved application; the testimony deposition of opposer’s
president, Daryl Jesperson (with related exhibits); and
opposer’s notice of reliance on applicant’s answers to
opposer’s interrogatories and the discovery deposition of
applicant’s secretary and chief financial officer, David P.
Bellino. Applicant did not take testimony or otherwise
offer any evidence on its behalf.
Both parties filed briefs on the case, but no oral
hearing was requested.
The record shows that opposer first used the RE/MAX
mark in connection with real estate brokerage services and
for rendering technical aid and assistance to others in the
2 Registration No. 1,139,014 issued August 26, 1980; Sections 8 &
15 affidavit accepted. Although opposer pleaded ownership of
several other registrations for marks which include the term
RE/MAX, in its brief on the case, opposer focused on a likelihood
of confusion between the above mark and applicant’s mark. In
view thereof, we too have focused on the issue of likelihood of
confusion vis-à-vis the above mark and applicant’s mark.
Opposition No. 111,647
3
establishment and operation of real estate brokerage
agencies in 1973. Opposer franchises the right to use the
RE/MAX mark to real estate brokers and in turn the real
estate brokers enter into contractual relationships with
their sales agents to allow the sales agents to use the mark
RE/MAX.
With respect to the adoption of the RE/MAX mark,
opposer’s president, Mr. Jesperson, testified that:
RE/MAX actually is an acronym. It stands
for real estate maximums. The real estate is
self-explanatory, RE slash. MAX stands for the
maximum to the consumer, because they are
getting nothing but full-time professional
agents in an industry that is unfortunately
noted for a lot of part-timers and beginners.
It’s the maximum for the broker/owner because
he not only has the benefit of working with
the best in the business, but he has a
projectable future income. And it’s the
maximum for the agent because they receive
the maximum commission allowable.
Opposer does business worldwide. It has approximately
3,300 individual RE/MAX offices of which approximately 2,700
are located in the United States and a sales force numbering
approximately 57,000 of which approximately 45,000 are
located in the United States. Since 1973 the RE/MAX mark
has been used in connection with millions of home sales
transactions resulting in approximately one trillion dollars
in sales in connection with the mark worldwide.
Opposer advertises in a variety of manners, including,
print media such as national and local newspapers, direct
Opposition No. 111,647
4
mail pieces, by way of signs at each of opposer’s real
estate offices, and by way of radio and television
commercials. Opposer also does a significant amount of
advertising through a fleet of more than 80 hot air balloons
bearing the RE/MAX mark. In addition, opposer’s individual
real estate brokers and sales agents advertise under the
RE/MAX mark. Since 1973 opposer has spent approximately
$2.4 billion on worldwide advertisements and promotions for
services offered under the RE/MAX mark.3 Opposer controls
the use of the RE/MAX mark in that it distributes to its
real estate brokers and sales agents a manual which outlines
the standards for use of the mark.
The scant information we have about applicant comes
from the discovery deposition of applicant’s secretary and
chief financial officer, David P. Bellino. Mr. Bellino
testified that he is also chief financial officer of a
company known as Appliancemax, which services and sells
appliances. According to Mr. Bellino, around 1977 he
decided to obtain a real estate broker’s license, and in
coming up with a name for a real estate company he was
forming he decided upon REALTYMAX because it is similar to
Appliancemax. Mr. Bellino testified that his Appliancemax
3 Although opposer did not break down its advertising and sales
figures for the United States, we can infer that these figures
are substantial inasmuch as the vast majority of opposer’s
offices and sales agents are located in the United States.
Opposition No. 111,647
5
business has grown rapidly such that he has not had an
opportunity to develop a business plan for the real estate
company and that no services have been rendered under the
REALTYMAX mark.
Priority of use is not in issue inasmuch as opposer
introduced a copy of its pleaded registration for the RE/MAX
mark through the testimony of Mr. Jesperson, and Mr.
Jesperson testified that the registration is subsisting and
owned by opposer. See King Candy Co. v Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). The
only issue is whether applicant’s use of REALTYMAX for real
estate brokerage, management and investment would be likely
to cause confusion with opposer’s mark RE/MAX for rendering
technical aid and assistance to others in the establishment
and operation of a real estate brokerage agency and real
estate brokerage services.
Upon consideration of the pertinent factors set forth
in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563, 567 (CCPA 1973), for determining whether a
likelihood of confusion exists, we agree with opposer that
confusion as to source or sponsorship is likely to occur.
Turning first to the services, applicant does not
dispute that the services in connection with which it
intends to use its mark are identical (real estate
brokerage) and otherwise related. Thus, if the parties’
Opposition No. 111,647
6
respective services were to be rendered under the same or
substantially similar marks, confusion would be likely to
occur.
Turning then to the marks, it is our view that when
considered in their entireties, the marks RE/MAX and
REALTYMAX are substantially similar in sound and meaning.
When spoken, REALTYMAX sounds similar to RE/MAX because both
share “RE” and “MAX.” Obviously, the forward slash in
opposer’s RE/MAX mark is not pronounced when spoken. As to
meaning, opposer’s witness testified that the “RE” in its
mark connotes real estate and the “MAX” maximum, with the
overall meaning being “real estate maximums.” Applicant’s
mark REALTYMAX can be said to have essentially the same
meaning, with the REALTY portion connoting real estate and
the MAX portion connoting maximum.4 Also, while we
recognize that the marks differ in appearance, applicant’s
mark REALTYMAX may well be viewed as an extended version of
opposer’s REMAX mark. In finding that the marks are
similar, we have kept in mind that consumers often retain
only a general rather than specific recall of marks to which
they are exposed.
We note applicant’s argument that the marks are not
similar because opposer’s mark RE/MAX, as actually used, is
depicted in the colors blue and red and typed capital
Opposition No. 111,647
7
letters, whereas applicant will not present its mark in this
manner. As opposer correctly points out in its reply brief,
because its RE/MAX mark is registered in typed capital
letters, opposer is not limited to any particular
presentation of its mark. Thus, in determining likelihood
of confusion, we must look to the term RE/MAX, without
regard to any particular presentation of the mark.
Another factor which is indicative of likelihood of
confusion in this case is the demonstrated strength of
opposer’s mark. Although we need not decide whether the
RE/MAX mark is famous, as urged by opposer, it is
unquestionably a well-known mark in the field of real estate
brokerage services. Opposer has had substantial sales of
its services under the RE/MAX mark for a number of years,
and it has expended significant outlays for advertising and
promotion of its mark. The RE/MAX mark is thus well-
recognized and, irrespective of whether the mark is famous,
it is a strong mark which is entitled to a correspondingly
broad scope of protection.
Finally, with respect to applicant’s contention that
there is no evidence of any known instances of actual
confusion, this is hardly surprising inasmuch as applicant’s
secretary/chief financial officer testified that applicant
had not begun use of the REALTYMAX mark. In any event, the
4 We judicially notice that The American Heritage Dictionary of
Opposition No. 111,647
8
test under Section 2(d) of the Trademark Act is not actual
confusion but likelihood of confusion.
In view of the foregoing, we conclude that purchasers
familiar with opposer’s real estate brokerage and related
services provided under the mark RE/MAX would be likely to
believe, upon encountering applicant’s mark REALTYMAX for
identical and related services, that the services originate
with or were somehow associated with or sponsored by the
same entity.
Decision: The opposition is sustained.
P. T. Hairston
C. E. Walters
H. R. Wendel
Administrative Trademark Judges
Trademark Trial and Appeal Board
the English Language (1976) defines “max” as “maximum.”