Century 21 Real Estate Corporation and TM Acquisition Corporationv.New Century Services Corporation

Trademark Trial and Appeal Board

Feb 9, 2007

No. 91162629 (T.T.A.B. Feb. 9, 2007)

Mailed:
Feb. 9, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Century 21 Real Estate Corporation1 and TM Acquisition
Corporation
v.
New Century Services Corporation
_____

Opposition No. 91162629
to application Serial No. 75585493
filed on November 9, 1998
_____

Ranjitsinh Mahida of Harvey Siskind LLP for Century 21 Real
Estate Corporation and TM Acquisition Corporation.

Randal D. Homburg for New Century Services Corporation.
______

Before Seeherman, Grendel and Mermelstein, Administrative
Trademark Judges.

Opinion by Grendel, Administrative Trademark Judge:

1 Century 21 Real Estate Corporation is one of the opposers named
in the original notice of opposition (along with TM Acquisition
Corporation). Opposers’ later filings in this case have
identified this opposer as “Century 21 Real Estate, LLC,
successor in interest to Century 21 Real Estate Corporation.”
However, opposers have never filed a motion to substitute Century
21 Real Estate, LLC as party plaintiff in place of Century 21
Real Estate Corporation, and there is nothing in the record from
which we might determine that a transfer of interest from Century
21 Real Estate Corporation to Century 21 Real Estate, LLC has
occurred. In view thereof, Century 21 Real Estate Corporation
shall remain the opposer of record herein (along with TM
Acquisition Corporation). See Fed. R. Civ. P. 25(c); TBMP
§512.01.
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91162629
2
New Century Services Corporation, applicant herein,
seeks registration on the Principal Register of the mark
depicted below

for services recited in the application as “real estate
management services, not including title-searching
services,” in Class 36.2 Applicant has disclaimed the
exclusive right to use SERVICES apart from the mark as
shown.
Opposers Century 21 Real Estate Corporation and TM
Acquisition Corporation filed a notice of opposition to
registration of applicant’s mark, asserting as grounds
therefor a likelihood of confusion claim under Trademark Act
Section 2(d), 15 U.S.C. §1052(d), and a dilution claim under
Trademark Act Section 43(c), 15 U.S.C. §1125(c).3

2 Serial No. 75585493, filed November 9, 1998. The application
is based on use in commerce under Trademark Act Section 1(a), 15
U.S.C. §1051(a). April 17, 1996 is alleged in the application to
be the date of first use of the mark, and June 20, 1997 is
alleged to be the date of first use in commerce.

3 The notice of opposition also includes Section 2(a) claims of
deceptiveness and false suggestion of a connection, but opposers
have not presented evidence or argument with respect thereto. We
deem opposers to have waived their pleaded Section 2(a) claims,
and we shall give them no consideration.
Opposition No. 91162629
3
Applicant answered the notice of opposition by
admitting certain of opposers’ allegations (as discussed
infra) and denying the remaining allegations.4
The evidence of record in this case consists of the
file of the opposed application; the pleadings herein;
opposers’ notices of reliance on their pleaded
registrations, on certain of applicant’s discovery
responses, on portions of the discovery deposition of
applicant’s principal Thomas Torossian (submitted during
opposers’ rebuttal testimony period), on various NEXIS
articles, and on various court documents and decisions in
other cases in which opposers have been plaintiffs; the
testimony depositions (and exhibits thereto) of opposers'
witnesses Mary Berry (one of opposers’ franchisees) and

4 Applicant also pleaded several affirmative defenses in its
answer. The first is essentially applicant’s further denials of
opposers’ likelihood of confusion claim, rather than a proper
affirmative defense. The second affirmative defense alleges that
opposer never notified applicant of any likelihood of confusion
prior to publication of applicant’s mark. To the extent that
this is intended to be some sort of a laches or estoppel defense,
it is without merit because such defenses are not available to an
applicant in an opposition proceeding. See National Cable
Television Association v. American Cinema Editors Inc., 937 F.2d
1572, 19 USPQ2d 1424 (Fed. Cir. 1991). Applicant’s third
affirmative defense is that opposers filed their notice of
opposition in bad faith and with the intention of harassing small
businesses like applicant’s. This defense likewise is without
legal merit in this opposition proceeding. Finally, applicant
alleges that “a simple disclaimer in Applicant’s mark would cure”
any likelihood of confusion or dilution, and applicant offers to
submit such a disclaimer. Applicant does not specify what it
proposes to disclaim (apart from the already-disclaimed
SERVICES), but such a disclaimer, even if entered, would not
dispose of opposers’ pleaded claims. For these reasons, and
because none of these defenses has been proven in any event, we
have given applicant’s “affirmative defenses” no consideration.
Opposition No. 91162629
4
Tanis Bolick (opposers’ Vice President of Franchise
Support); and the testimony deposition of applicant’s
principal Thomas Torossian (and exhibits thereto).
The case is fully briefed. For the reasons discussed
below, we sustain opposers’ Section 2(d) ground of
opposition. In view thereof, we need not and do not reach
opposers' dilution claim.
Initially, we must address an apparent misunderstanding
on the part of applicant regarding the nature and purpose of
this opposition proceeding. Contrary to applicant’s
arguments, the issue in this case is not whether the Board
should “affirm” or “overturn” the decision of the Trademark
Examining Attorney who approved applicant’s mark for
publication. That decision is not at issue in this inter
partes proceeding. Rather, the issues to be determined in
this proceeding are whether opposers have established that
they will be damaged by registration of applicant’s mark
(i.e., whether opposers have established their standing to
oppose), and whether they have established at least one
statutory ground for opposition to registration of
applicant’s mark. See Trademark Act Section 13(a), 15
U.S.C. §1063(a). The Trademark Examining Attorney’s ex
parte decision to allow publication of applicant’s mark for
opposition is not relevant to our determination in this
Opposition No. 91162629
5
inter partes opposition proceeding, which must be made on
the basis of the evidence the parties have made of record.
We turn now to the merits of this proceeding. Opposers
have made of record status and title copies of numerous
pleaded CENTURY 21 registrations.5 These include:
Reg. No. 1063488, of the mark CENTURY 21 (in standard
character format) for “real estate brokerage services”;6
Reg. No. 1085039, of the mark CENTURY 21 (in standard
character form) for “rendering technical assistance to
others in the establishment and/or operation of real estate
brokerage businesses”;7
Reg. No. 1304095, of the mark CENTURY 21 (in standard
character form) for “mortgage brokerage services and
assisting lending institutions in the processing of loans”;8

5 The registrations pleaded by and relied on by opposers in this
case are owned by opposer TM Acquisition Corporation; opposer
Century 21 Real Estate Corporation uses and licenses others to
use the registered marks pursuant to authority granted by TM
Acquisition Corporation. See Notice of Opposition at ¶ 2,
admitted by applicant in its answer. Also, we note that opposers
also made of record two registrations which we have not
considered, i.e., Reg. No. 2131405, which was cancelled under
Section 8 on February 8, 2006, and Reg. No. 1091541, which
expired in February 1999.

6 Issued April 12, 1977; affidavits under Sections 8 and 15
accepted and acknowledged; renewed.

7 Issued February 7, 1978; affidavits under Sections 8 and 15
accepted and acknowledged; renewed.

8 Issued November 6, 1984; affidavits under Sections 8 and 15
accepted and acknowledged; renewed.

Opposition No. 91162629
6
Reg. No. 2178970, of the mark CENTURY 21 (in standard
character form) for “providing access to the interactive
computer databases of others in the fields of real estate,
insurance and mortgage services, via a global computer
network”;9
Reg. No. 1085040, of the mark depicted below,

for “real estate brokerage services”;10
Reg. No. 1353229, of the mark depicted below,

for “providing technical assistance in the establishment and
operation of businesses providing brokerage of real estate
securities and related consulting services”;11
Reg. No. 1334686, of the mark CENTURY 21 INVESTMENT
CONNECTION (INVESTMENT disclaimed), for “real estate
brokerage services”;12

9 Issued August 4, 1998; affidavits under Sections 8 and 15
accepted and acknowledged.

10 Issued February 7, 1978; Section 8 affidavit accepted; renewed.

11 Issued August 6, 1985; affidavits under Sections 8 and 15
accepted and acknowledged.

12 Issued May 7, 1985; affidavits under Sections 8 and 15 accepted
and acknowledged.
Opposition No. 91162629
7
Reg. No. 2615437, of the mark CENTURY 21 MORTGAGE
(MORTGAGE disclaimed) for “mortgage banking services”;13
Reg. No. 2633322, of the mark CENTURY 21 MATURE MOVES,
FOR “real estate brokerage services”;14
Reg. No. 2633331, of the mark depicted below,

for “real estate brokerage services”;15
Reg. No. 1551266, of the mark CENTURY 21 STAR for “real
estate brokerage and leasing and mortgage banking services
for military personnel”;16
Reg. No. 1526059, of the mark depicted below,

(MILITARY RELOCATION NETWORK disclaimed), for “relocation
services” and “real estate brokerage services”;17

13 Issued September 3, 2002.

14 Issued October 8, 2002.

15 Issued October 8, 2002.

16 Issued August 8, 1989; affidavits under Sections 8 and 15
accepted and acknowledged.

17 Issued February 21, 1989; affidavits under Sections 8 and 15
accepted and acknowledged.

Opposition No. 91162629
8
Reg. No. 2656899, of the mark depicted below,

for “real estate brokerage services”;18
Reg. No. 2158319, of the mark CENTURY 21 COMMERCIAL
INVESTMENT NETWORK and design (COMMERCIAL INVESTMENT NETWORK
disclaimed), for “real estate brokerage, management and
leasing services, business brokerage services, and real
estate investment consulting services”;19 and
Reg. No. 2544997, of the mark depicted below,

for “real estate brokerage services.”20
Initially, we note that opposers contend that they own
a family of CENTURY marks. We find that the record does not
support such a claim, inasmuch as there is insufficient
evidence to establish that opposer uses and advertises its
various marks together in the manner of a family of marks.
Mere ownership of the various marks, or registrations
thereof, does not suffice to establish a family of marks.
See J & J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d

18 Issued December 3, 2002.

19 Issued May 19, 1998; affidavits under Sections 8 and 15
accepted and acknowledged.

20 Issued March 5, 2002.
Opposition No. 91162629
9
1460, 18 USPQ2d 1889 (Fed. Cir. 1991). Our decision
therefore is not based on any such alleged family of marks.
Instead, we shall base our analysis and decision on
opposers’ prior use and registration of its CENTURY 21 marks
(summarized supra), including its CENTURY 21 standard
character form marks, its CENTURY 21 design marks and its
CENTURY 21 marks which also include other generic or
descriptive wording. We need not and shall not consider or
base our decision on those of opposers’ registered marks
which do not consist of or include the designation CENTURY
21.
Because opposers have properly made their pleaded
registrations of record, we find that opposers have
established their standing to oppose registration of
applicant’s mark. See Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); Lipton
Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213
USPQ 185 (CCPA 1982).
Moreover, because opposers’ pleaded registrations are
of record, Section 2(d) priority is not an issue in this
case as to the marks and goods and services covered by said
registrations. See King Candy Co. v. Eunice King’s Kitchen,
Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). In any
event, opposers have proven that their use of their CENTURY
21 marks predates applicant’s date of first use.
Opposition No. 91162629
10
Our likelihood of confusion determination under Section
2(d) is based on an analysis of all of the facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue (the du Pont factors). See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689 (Fed. Cir. 2005); In re Majestic Distilling Co., 315
F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
The fifth du Pont evidentiary factor requires us to
consider evidence of the fame of opposers' mark, and to give
great weight to such evidence if it exists. See Bose Corp.
v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303,
1309 (Fed. Cir. 2002); Recot Inc. v. Becton, 214 F.3d 1322,
54 F.2d 1894 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v.
Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453
(Fed. Cir. 1992).

Fame of an opposer’s mark or marks, if it
exists, plays a “dominant role in the process of
balancing the DuPont factors,” Recot, 214 F.3d
at 1327, 54 USPQ2d at 1456 [sic – 1897], and
“[f]amous marks thus enjoy a wide latitude of
legal protection.” Id. This is true as famous
marks are more likely to be remembered and
associated in the public mind than a weaker
mark, and are thus more attractive as targets
for would-be copyists. Id. Indeed, “[a] strong
Opposition No. 91162629
11
mark … casts a long shadow which competitors
must avoid.” Kenner Parker Toys, 963 F.2d at
353, 22 USPQ2d at 1456. A famous mark is one
“with extensive public recognition and renown.”
Id.

Bose Corp. v. QSC Audio Products Inc., supra, 63 USPQ2d
at 1305.
In this case, we find that the evidence of record
clearly establishes that opposers’ CENTURY 21 marks are
famous in the real estate field, for purposes of the fifth
du Pont likelihood of confusion factor. First, we note that
applicant, in ¶ 7 of its answer to the notice of opposition,
expressly admitted opposers’ allegation (at ¶ 24 of the
notice of opposition) that “[f]or many years, the CENTURY 21
Marks have been widely used and extensively advertised in
the United States and, therefore, these names and marks have
become well known and famous as distinctive symbols of
Opposers’ goodwill.”
Second, in addition to applicant’s admission, we find
that opposers have presented substantial evidence in support
of their claim of fame. Opposers and their franchisees have
used the CENTURY 21 mark since the founding of the company
in 1971. (Bolick Depo. at 6.) Since 1971, opposers and
their franchisees have spent over $1 billion in advertising
and promoting their services under the CENTURY 21 mark.
(Id. at 22.) Opposers’ and their franchisees’ sales in 2004
totaled over $1 billion, with 920,000 real estate
Opposition No. 91162629
12
transactions closed in that year. (Id. at 11.)21 Opposers’
and their franchisees’ 2004 expenditures on advertising and
promoting the mark totaled $55 million. (Id. at 22.)
Century 21 is the number one real estate company in the
world in terms of closed transactions and also in terms of
numbers of offices and agents. (Id. at 11.) We note in
this regard that applicant’s counsel, during cross-
examination of Ms. Bolick, stated as follows: “... I’m
going to tell you that no doubt Century 21 is the biggest
real estate company in the United States. I’ll stipulate to
that.” (Id. at 52.)22 In a 2000 “Total Unaided Brand
Awareness” survey, respondents were asked “Please tell me
which real estate companies/any on-line or Internet real
estate companies or services you have heard of.” 55% of the
respondents stated that they had heard of Century 21, a
percentage which is over twenty points higher than the next

21 Sales of houses present a somewhat unusual situation in terms
of evaluating sales figures with respect to the factor of fame,
since homes may cost many millions of dollars, and therefore a
large dollar figure for sales may not actually represent a large
number of transactions. However, in this case opposers have
presented evidence not only of the dollar amount of their sales,
but the number of transactions. It is therefore clear that
opposers’ sales represent dealings with a large number of
clients, purchasers and potential purchasers.

22 The determination of fame is dependent on recognition of the
mark in the United States, and therefore the fact that Century 21
may be the number one real estate company in the world would be
irrelevant if there were no evidence of the renown of the mark in
the United States. Here, of course, we have such evidence, as
well as applicant’s stipulation that Century 21 is the biggest
real estate company in the United States.

Opposition No. 91162629
13
most-identified real estate company. (Id. at 40-42.)
Opposers’ website, CENTURY21.COM, is the second most-visited
website in the real estate field, second only to
REALTOR.COM. (Id. at 35-36.) Finally, the NEXIS evidence
submitted by opposers via notice of reliance shows numerous
unsolicited mentions in the press of opposers and their
CENTURY 21 mark.
Based on all of this evidence,23 including applicant’s
admission in its answer, we find that opposers’ CENTURY 21
mark is a famous mark for purposes of the fifth du Pont
factor. Such fame “plays a dominant role in the process of
balancing the du Pont factors.” Recot Inc. v. Becton,
supra, 214 F.3d at 1327, 54 USPQ2d at 1897. Opposers’
famous mark “casts a long shadow which competitors must
avoid.” Kenner Parker Toys, supra, 963 F.2d at 353, 22
USPQ2d at 1456.
We turn next to the second du Pont factor, i.e., the
similarity or dissimilarity of the parties’ respective
services. It is not necessary that the respective services
be identical or even competitive in order to support a

23 In finding fame, we have not relied on opposers’ evidence,
submitted via notice of reliance, of the numerous decisions in
other litigation in which the fame of opposers’ marks was found
or discussed. The factual findings of those other tribunals are
not actual evidence of fame which can be asserted by opposers in
this case. We consider this evidence of and from other
proceedings as establishing only that opposers have been vigilant
in policing their marks.

Opposition No. 91162629
14
finding of likelihood of confusion. That is, the issue is
not whether consumers would confuse the services themselves,
but rather whether they would be confused as to the source
of the services. It is sufficient that the services be
related in some manner, or that the circumstances
surrounding their use be such that they would be likely to
be encountered by the same persons in situations that would
give rise, because of the marks used thereon, to a mistaken
belief that they originate from or are in some way
associated with the same source or that there is an
association or connection between the sources of the
respective services. See In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);
In re Melville Corp., 18 USPQ2d 1386 (TTAB 1991); and In re
International Telephone & Telegraph Corp., 197 USPQ 910
(TTAB 1978).
First, we note that applicant has not disputed or
argued that its services are closely related, if not
identical, to opposers’ services. Indeed, in its brief
applicant essentially concedes that opposers and applicant
“may be in closely related fields of endeavor.” (Brief at
6.
We find in any event that “real estate management
services, not including title-searching services,” the
services recited in applicant’s application, are identical
Opposition No. 91162629
15
in part, and otherwise similar and related to, the services
rendered by opposers in connection with their CENTURY 21
marks. Applicant’s recited services are identical to the
real estate management services recited in opposer’s
Registration No. 2158319 (of the mark CENTURY 21 COMMERCIAL
INVESTMENT NETWORK). The other services recited in
opposers’ various CENTURY 21 registrations, most notably
opposers’ “real estate brokerage services,” are, as shown by
the record, closely related to applicant’s real estate
management services.
In this regard, we note that in addition to the
evidence of opposer’s ownership of its registrations,
opposers’ witness Ms. Bolick testified that opposers use
their CENTURY 21 marks in connection with a wide variety of
real estate-related services, including real estate
management services: “Q. And what types of real estate
would Century 21 be involved in? A. Well, residential real
estate, commercial real estate, property management ...
relocation. All different aspects of real estate, quite
frankly. Not much they’re not involved in.” (Bolick Depo.
at 5.) Compare this to the testimony of applicant’s
principal Mr. Torossian, who stated that applicant is
engaged in “property management, land acquisition for
government right-of-way purposes and commercial and
residential real estate as it pertains to purchase of
Opposition No. 91162629
16
distressed properties and refurbishment for resale.”
(Torossian Testimony Depo. at 19.) He also testified that
“[a]nything that has to do with real estate, New Century
Services is involved.” (Id.) This testimony from both
parties’ witnesses further demonstrates that real estate
companies (like opposers’ and applicant’s) may engage in
various activities involving real estate, including
management and brokerage services, and that the parties’
services therefore are related for purposes of the second
du Pont factor.
For these reasons, we find that applicant’s recited
services are in part identical to and otherwise closely
related to the services opposers render under their CENTURY
21 marks. The second du Pont factor accordingly weighs in
favor of a finding of likelihood of confusion.
Under the third du Pont factor (similarity or
dissimilarity of trade channels), we find that applicant’s
recited services and opposers’ services are rendered in
similar trade channels and to similar classes of purchasers.
There are no restrictions as to trade channels or classes of
purchasers in the recitation of services in applicant’s
application or in the recitations of services in opposers’
registrations. We therefore presume that the recited
services are marketed in all normal trade channels for such
services and to all normal classes of purchasers for such
Opposition No. 91162629
17
services. In re Elbaum, 211 USPQ 639 (TTAB 1981). To the
extent that applicant’s recited “real estate management”
services are identical to opposers’ services, we find that
the respective services are marketed in identical trade
channels and to identical classes of purchasers. We also
find that the trade channels and classes of purchasers for
applicant’s services are similar to the trade channels and
classes of purchasers for opposers’ various other real
estate services. Applicant’s “real estate management”
customers could and would be the same as opposers’
customers, which include both property owners (ordinary
consumers who might purchase a home or a second home and
then decide to rent it out, and would hire a company like
applicant’s to manage the property), and real estate
professionals, as well as other professionals who deal with
real estate, such as real estate lenders.
For these reasons, we find that the parties’ respective
trade channels and classes of purchasers are identical in
part and otherwise closely related. The third du Pont
factor accordingly weighs in favor of a finding of
likelihood of confusion.
Under the fourth du Pont factor, i.e., the conditions
of purchase, we find that the purchasers of opposers’ and
applicant’s respective services, both real estate
professionals and ordinary consumers, are likely to exercise
Opposition No. 91162629
18
care in making their purchasing decisions. This factor
weighs in applicant’s favor in our likelihood of confusion
analysis.
We turn next to the first du Pont factor, which
requires us to determine the similarity or dissimilarity of
the marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial
impression. Palm Bay Imports, Inc., supra. The test, under
the first du Pont factor, is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression that confusion
as to the source of the goods offered under the respective
marks is likely to result. The focus is on the recollection
of the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See Sealed
Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Furthermore, although the marks at issue must be considered
in their entireties, it is well-settled that one feature of
a mark may be more significant than another, and it is not
improper to give more weight to this dominant feature in
determining the commercial impression created by the mark.
See In re Chatam International Inc., 380 F.3d 1340, 71
USPQ2d 1944 (Fed. Cir. 2004); In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Finally, in cases
Opposition No. 91162629
19
such as this, where the applicant’s services are identical
(at least in part) to the opposers’ services, the degree of
similarity between the marks which is required to support a
finding of likelihood of confusion is less than it would be
if the services were not identical. Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
Applying these principles in the present case, we find
as follows. First, we find that the dominant feature of
opposers’ CENTURY 21 marks and of applicant’s NEW CENTURY
SERVICES mark is the word CENTURY. In re Chatam
International Inc., supra; In re National Data Corp., supra.
CENTURY is an arbitrary term when used in connection with
real estate services. The word NEW in applicant’s mark and
the number 21 in opposers’ marks clearly modify, refer to
and reinforce the dominant significance of the word CENTURY
in the respective marks. Applicant has disclaimed the
exclusive right to use the generic word SERVICES apart from
the mark as shown; while we do not ignore this word, we find
that it is entitled to little weight in our comparison of
the marks.
In terms of appearance, we find that the marks look the
same to the extent that they both include the word CENTURY.
There are visual differences between the respective marks,
including the presence of the horse-shoe design feature in
Opposition No. 91162629
20
applicant’s mark, the presence of the word NEW in
applicant’s mark, the presence of the numeral 21 in
opposers’ marks, and the presence of different generic
wording in applicant’s mark and in some of opposers’ marks.
We find, however, that the marks are more similar than
dissimilar in terms of appearance in view of the presence in
both marks of the word CENTURY.
In terms of sound, we find again that the marks are
identical to the extent that CENTURY would be pronounced in
both marks. There are also some differences in
pronunciation, inasmuch as applicant’s mark includes the
words NEW and SERVICES, while opposers’ marks include the
numeral 21 and/or additional generic wording. Again,
however, we find that the marks are more similar than
dissimilar in terms of sound due to the dominant presence of
the word CENTURY in both marks.
We find the marks to be quite similar in connotation.
The connotation of CENTURY 21 is “the 21st century.” The
21st century also is and would be understood to be the “new
century,” inasmuch as we are only a few years into it.
Thus, CENTURY 21 and NEW CENTURY mean essentially the same
thing. The presence of the generic and disclaimed word
SERVICES in applicant’s mark and the presence of additional
generic and disclaimed matter in some of opposers’ CENTURY
21 marks do not detract from or negate the obvious
Opposition No. 91162629
21
similarity in connotation between the respective marks. See
Kenner Parker Toys, supra.
In terms of overall commercial impression, we find that
the marks are similar rather than dissimilar. The dominant
feature in the commercial impression of both marks is the
word CENTURY, and even the word NEW in applicant’s mark and
the number 21 in opposers’ marks give the marks highly
similar if not essentially identical commercial impressions
when the marks are considered as a whole. The presence of
the horse-shoe design element in applicant’s mark does not
detract from or negate the similarity in the marks’ overall
commercial impressions.
Applicant’s repeated argument that the marks can be
distinguished when subjected to a side-by-side comparison
misstates the test under the first du Pont factor. Sealed
Air Corp. v. Scott Paper Co. supra. And even if we assume,
arguendo, that purchasers will be able to view the marks on
a side-by-side basis, we find that they still are likely to
be confused as to the source of the services offered under
the respective marks. Whatever the minor points of
dissimilarity between the marks, we find that when the marks
are viewed in their entireties, especially in terms of
connotation and overall commercial impression, they are
similar rather than dissimilar. We find that purchasers are
Opposition No. 91162629
22
likely to assume, based on the presence of the word CENTURY
in both marks, that a source connection exists.
Moreover, as discussed above, we find that opposers’
mark is famous and entitled to a broad scope of protection
which newcomers like applicant must stay well away from, and
we also find that applicant’s services are in part identical
to and otherwise closely related to opposers’ services.
Both of these findings under the fifth and second du Pont
factors reduce the degree of similarity between the marks
that is required to find likelihood of confusion upon
balancing all of the du Pont factors.
For these reasons, we find that applicant’s mark is
confusingly similar to opposers’ mark. The first du Pont
factor accordingly weighs in favor of a finding of
likelihood of confusion.
Applicant argues that there is no evidence of any
instances of actual confusion between the parties’
respective marks and services, and that the seventh du Pont
factor therefore weighs in its favor. However, the record
shows that applicant’s use and advertising of its mark in
connection with the services recited in the application have
not been substantial, and certainly not so extensive that
there has been a meaningful opportunity for any actual
confusion to have occurred. Applicant is licensed to do
real estate business only in Oklahoma. (Torossian Discovery
Opposition No. 91162629
23
Depo. at 17-19.) In the ten years from the founding of the
company in 1995 through 2004, applicant’s expenditures on
advertising totaled only $25,638. (Applicant’s response to
opposer’s Interrogatory No. 5.) Applicant hasn’t advertised
in newspapers “for years,” if ever. (Torossian Discovery
Depo. at 145-46.) Applicant is now “dedicating over 90% of
its business to the right-of-way acquisition” activities.
(Applicant’s response to opposer’s Interrogatory No. 3.)
Applicant’s sole principal, Mr. Torossian, “has limited his
practice to land acquisition and land management service for
the Department of Transportation and a very occasional
purchase of distressed or older property from an individual
seller...” Applicant’s concentration on attempting to
obtain business from the Department of Transportation, along
with its minimal advertising expenditures, go far to explain
the apparent absence of actual confusion between applicant’s
mark and services and those of opposers’.
Under the eighth du Pont factor, such lack of
opportunity for actual confusion to have occurred counters
the lack of evidence of actual confusion, such that the
seventh and eighth du Pont factors essentially cancel each
other out in our likelihood of confusion analysis. Stated
differently, we find that given the circumstances of
applicant’s limited use and advertising of its mark, the
absence of actual confusion is not factually surprising or
Opposition No. 91162629
24
legally significant. See Time Warner Entertainment Co. v.
Jones, 65 USPQ2d 1650, 1663; Gillette Canada Inc. v. Ranir
Corp., 23 USPQ2d 1768 (TTAB 1992). In any event, the
appropriate question is whether there is a likelihood of
confusion, not whether confusion has actually occurred.
While evidence of actual confusion would strongly support
opposers’ case, it does not necessarily follow that the lack
of such evidence supports applicant’s case, particularly
where, as here, there has not been a significant opportunity
for such confusion to have occurred. See Weiss Associates
Inc. v. HRL Associates Inc., 902 F.2d 1546, 1549, 14 USPQ2d
1840, 1842-43 (Fed. Cir. 1990), and cases cited therein.
Having considered the evidence of record as it pertains
to all of the du Pont factors, we conclude that opposers
have established that a likelihood of confusion exists. The
fourth du Pont factor, conditions of purchase, may favor
applicant, but the evidence and our findings as to the other
du Pont factors, including the similarity of the marks, the
similarity of the services and the trade channels and
classes of purchasers for such services, and, most
significantly, the fame of opposers’ mark, clearly weigh in
opposers’ favor. On balancing all of the du Pont factors,
we conclude that a likelihood of confusion exists. To the
extent that any doubts might exist as to the correctness of
this conclusion (and we have none), we resolve such doubts
Opposition No. 91162629
25
against applicant. See Century 21 Real Estate Corp., supra;
Ava Enterprises Inc. v. Audio Boss USA Inc., 77 USPQ2d 1783
(TTAB 2006); and Baseball America Inc. v. Powerplay Sports
Ltd., 71 USPQ2d 1844 (TTAB 2004).
Because opposers have established their standing to
oppose and their pleaded Section 2(d) ground of opposition,
we find that they are entitled to prevail in this case.

Decision: The opposition is sustained.24

24 As noted above, we need not and do not reach opposers’ dilution
claim, nor its waived Section 2(a) claims.