Homes for Heroes, Inc.v.Deals 4 Heroes, LLC

Trademark Trial and Appeal Board

Oct 8, 2020

91235046 (T.T.A.B. Oct. 8, 2020)

Mailed: October 8, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

Homes for Heroes, Inc.
v.
Deals 4 Heroes, LLC
___

Opposition No. 91235046
___

Cynthia J. Walden and Sarah B. Kelleher of Fish & Richardson PC
for Homes for Heroes, Inc.

Adam C. Bach and R. Hudson Smith of Eller Tonnsen Bach, LLC
for Deals 4 Heroes, LLC.
______
Before Cataldo, Shaw and Adlin,
Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
Applicant Deals 4 Heroes, LLC seeks a Principal Register registration for the
mark DEALS 4 HEROES, in standard characters, for
advertising and directory services, namely, promoting the
services of others by providing a web page featuring links
to the websites of others; providing business information
via a website; providing a website featuring on-line
classified advertisements; providing a web site featuring
the ratings, reviews and recommendations on employers
and employees and places of employment for use by
employees, employers, business owners, and consumers;
providing business information via a website; providing on-
line web directory services featuring hyperlinks to the
This Opinion is not a
Precedent of the TTAB
Opposition No. 91235046
2
websites of others; providing on-line web directory services
featuring hyperlinks to the websites of businesses or
service providers who do business with first responders,
police, firemen, veterans, teachers, nurses, and active-duty
military, and employees of other governmental or non-
profit entities in International Class 35.1

In its amended notice of opposition, Opposer Homes for Heroes, Inc. alleges prior
use and registration of HOMES FOR HEROES, in standard characters and the
design form shown below, as follows:
HOMES FOR HEROES, in standard characters (no
disclaimer), for: “mortgage and title brokerage, real estate
brokerage, mortgage lending services” in International
Class 36 (the “’909 Registration”);2 and

HOMES FOR HEROES, in standard characters (with
HOMES disclaimed) for “administration of a discount
program for enabling participants to obtain discounts on
goods and services through businesses and organizations
offering savings to military members and veterans, peace
officers, firefighters, and emergency medical technicians,
and other community heroes; providing a website
permitting users to locate businesses and organizations
providing savings to military members and veterans, peace
officers, firefighters, emergency medical technicians, and
other community heroes, and links to the websites of such
participating businesses and organizations; providing a
website permitting prospective offerors of savings to
military members and veterans, peace officers, firefighters,
emergency medical technicians, and other community
heroes to join the discount program; advertising and
marketing of a discount program for enabling participants

1 Application Serial No. 86919998, filed February 25, 2016 under Section 1(a) of the
Trademark Act based on use. Applicant later amended the filing basis to Section 1(b) of the
Act, based on an alleged bona fide intent to use the mark in commerce.
2 Registration No. 2904909, issued November 23, 2004; renewed. While this registration still
includes a disclaimer of INCORPORATED, in 2008 Opposer amended the registration to
delete that term from the mark.
Opposition No. 91235046
3
to obtain discounts on goods and services through
businesses and organizations offering savings to military
members and veterans, peace officers, firefighters,
emergency medical technicians, and other community
heroes; providing a website which features advertisements
for businesses and organizations providing savings to
military members and veterans, peace officers, firefighters,
emergency medical technicians, and other community
heroes” in International Class 35 (the “’086 Registration”);3

(HOMES disclaimed) for: “mortgage and title
insurance brokerage, real estate brokerage, mortgage
lending services, directly and through a network of
affiliates” in International Class 36 (the “’639
Registration”);4 and

(HOMES disclaimed) for: “mortgage and title
insurance brokerage, real estate brokerage, mortgage
lending services, directly and through a network of
affiliates, and charitable purposes related thereto” in
International Class 36 (the “’642 Registration”).5

Opposer’s sole operative ground for opposition is that use of Applicant’s mark would
be likely to cause confusion with Opposer’s marks.6 In its answer, Applicant denies

3 Registration No. 4399086, issued September 10, 2013; Section 8 Affidavit accepted, Section
15 Affidavit acknowledged.
4 Registration No. 4379639, issued August 6, 2013; Section 8 Affidavit accepted, Section 15
Affidavit acknowledged.
5 Registration No. 4379642, issued August 6, 2013; Section 8 Affidavit accepted, Section 15
Affidavit acknowledged. Both the ’639 and ’642 Registrations include this description of the
mark: “The mark consists of a stylized blue house with a yellow window, set as the field in a
stylized American flag with red stripes against a white background, the stripes having star
cut-outs. The wording ‘Homes’ is in red, ‘for’ is in yellow, and ‘Heroes’ is in blue.”
6 The amended notice of opposition also alleges false suggestion of a connection under Section
2(a), and that Applicant did not have a bona fide intention to use its mark on the filing date
of the involved application under Section 1(b). Opposer did not pursue these claims at trial,
Opposition No. 91235046
4
the salient allegations in the notice of opposition.
I. The Record
The record consists of the pleadings and, by operation of Trademark Rule 2.122(b),
37 C.F.R. § 2.122(b), the file of Applicant’s involved application. In addition, Opposer
introduced:
Testimony Affidavit of Christopher Bowles, its General
Manager, and the exhibits thereto (“Bowles Aff.”). 35
TTABVUE 2-120.7

Applicant introduced:
Amended Notice of Reliance on Internet printouts and
third-party registrations (“Amended App. NOR”). 44
TTABVUE; 38 TTABVUE 6-49 (exhibits submitted with
original App. NOR).

Testimony Affidavit of Tyler Harris, one of its
members/owners (“Harris Aff.”). 39 TTABVUE.

Testimony Affidavit of Joseph Caldwell, another of its
members/owners (“Coldwell Aff.”). 40 TTABVUE.

II. The Parties
Opposer uses its mark in connection with administering discount programs for
“heroes,” and providing information about those programs. Applicant intends to use

however, or discuss them in its Trial Brief (other than an apparently stray mention of false
suggestion in the Statement of Issues). These claims are therefore waived. Alcatraz Media,
Inc. v. Chesapeake Marine Tour Inc., 107 USPQ2d 1750, 1753 (TTAB 2013), aff’d 565 F. App’x
900 (Fed. Cir. 2014).
7 Citations to the record reference TTABVUE, the Board’s online docketing system. The
number preceding “TTABVUE” corresponds to the docket entry number(s), and any
number(s) following “TTABVUE” refer to the page number(s) of the docket entry where the
cited materials appear.
Opposition No. 91235046
5
its mark in connection with promoting discounts for “heroes,” and providing
information about the discounts.
A. Opposer
Opposer “works with affiliates to recognize the service of individuals serving their
country and communities … [including] military members and veterans, peace
officers, firefighters, emergency medical technicians, law enforcement, and first
responders, and other community heroes such as healthcare professionals and
teachers.” 35 TTABVUE 2 (Bowlen Aff. ¶ 2). The “recognition” is in the form of
discounts. More specifically, since its founding in 2002, Opposer has provided
discounts through affiliated real estate agents, brokers and lenders in connection
“with the purchase, sale, or refinancing of a home.” Id. at 6 (Bowlen Aff. ¶ 16).
Opposer submitted the following as a specimen in connection with its ‘909
Registration:

Opposition No. 91235046
6
35 TTABVUE 54-55. The following website capture shows how one of Opposer’s real
estate affiliates promotes the HOMES FOR HEROES program on its website:

Id. at 12, 639 (Bowlen Aff. ¶ 37 and Ex. 15).
Opposer expanded its offerings in 2007 when it “began working with non-real
estate related businesses to advertise and promote discounts to consumers in Hero
Groups” (as reflected in the identification of services in the ’086 Registration). Id.
(Bowlen Aff. ¶ 17). The expanded discounts are for apparel, hardware, floral delivery
and moving services, and professional services “such as loan brokerage, financial
services, credit counseling, legal services and insurance brokerage.” Id. at 6-7
(Bowlen Aff. ¶ 19). This expanded discount program is sometimes also identified as
FRIENDS OF HEROES. Id. at 6 (Bowlen Aff. ¶ 18). Opposer provided the following
as a specimen of use in connection with the ‘086 Registration:
Opposition No. 91235046
7

35 TTABVUE 239.
In connection with this discount program, Opposer “offers an online directory
listing businesses and organizations providing [non-real estate] savings to Heroes,”
at “homesforheroes.com/deals.” Id. at 7 (Bowlen Aff. ¶ 22). These include “large
retailers such as Home Depot and Target, large insurance companies such as Liberty
Mutual and Farmers, and local insurance brokers” around the country. Id. at 8
(Bowlen Aff. ¶ 26). The printout from Opposer’s online directory below on the left
depicts a search for Opposer’s “nation-wide” affiliates, and the printout below on the
right depicts a search of Opposer’s “Alabama” affiliates:
Opposition No. 91235046
8

35 TTABVUE 9, 322, 323 (Bowlen Aff. ¶ 29 and Ex. 6).
Opposer’s “affiliates have the ability to license and use the HOMES FOR HEROES
Marks to advertise real estate and mortgage savings as well as business-affiliate
savings.” Id. at 12 (Bowlen Aff. ¶ 36). In addition, or perhaps as a result, Opposer
“receives payment from business affiliates by receiving a percentage of the proceeds
when consumers purchase goods or services through a link on [Opposer’s] online
Opposition No. 91235046
9
directory or by receiving a flat payment from a business affiliate in exchange for
placing the businesses’ advertisement on [Opposer’s] online directory.” Id. at 8
(Bowlen Aff. ¶ 25).
Opposer has been successful. “As of December 2018, Heroes will have purchased
over $5 billion in real estate through affiliates as part of the Homes for Heroes
program.” Id. at 12 ((Bowlen Aff. ¶ 38). According to Mr. Bowlen, Opposer “now has
more than 2,500 affiliates across all 50 states. This is far more than any other similar
program in the United States, and [Opposer] currently has the largest market share
of any program of its kind.” Id. at 5 (Bowlen Aff. ¶ 13). Opposer has provided discounts
totaling more than $40 million to over 25,000 “heroes.” Id. (Bowlen Aff. ¶ 14).
B. Applicant
Applicant was formed in 2015 by three members of Consolidated Assurance, LLC,
“an insurance brokerage selling life insurance policies to first responders (e.g.,
firemen, policemen, and EMS technicians), members of the military, and veterans.”
39 TTABVUE 2 (Harris Aff. ¶¶ 2, 3). In working with these “hero” customers,
Applicant’s founders “heard about discount programs offered to Heroes from local
business establishments,” and “planned to contact Heroes and provide them with
materials necessary to go to local businesses and help them establish discount
programs, if they did not already have them, and become a part of the Deals online
directory.” Id. at 3 (Harris Aff. ¶¶ 5, 6). After Opposer filed its original notice of
opposition, Applicant “suspended our planned business launch while we waited to
determine whether we could proceed with the use of Deals 4 Heroes mark.” Id. at 6
(Harris Aff. ¶ 16).
Opposition No. 91235046
10
III. Opposer’s Section 2(d) Claim
Before addressing whether the parties’ marks are likely to be confused, we must
first consider whether Opposer is entitled to bring this proceeding. If it is we must
then consider whether priority is at issue and if it is which party has it. See 15 U.S.C.
§§ 1052(d) and 1063.
A. Opposer’s Entitlement to Bring a Statutory Cause of Action8
To establish entitlement to bring a statutory cause of action under Section 13 of
the Trademark Act, such as a cause of action for likelihood of confusion, a plaintiff
must demonstrate a real interest in the proceeding and a reasonable belief of damage.
Australian Therapeutic Supplies Pty. Ltd. v. Naked TM, LLC, 965 F.3d 1370, 2020
USPQ2d 10837 at *3 (Fed. Cir. 2020); see also Empresa Cubana Del Tabaco v. Gen.
Cigar Co., 753 F.3d 1270, 111 USPQ2d 1058 (Fed. Cir. 2014); Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1727 (Fed. Cir. 2012);
Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999). Here,
Opposer has a “real interest” and a “reasonable belief of damage.” Australian
Therapeutic, 2020 USPQ2d 10837 at *3. Indeed, Opposer’s pleaded registrations,
which were properly made of record, 35 TTABVUE 3-4, 14-280 (Bowles Aff. ¶¶ 3-7
and Exs. 1-4), establish that Opposer is entitled to oppose registration of Applicant’s

8 Our decisions have previously analyzed the requirements of Sections 13 and 14 of the
Trademark Act, 15 U.S.C. §§ 1063-64, under the rubric of “standing.” We now refer to this
inquiry as entitlement to bring a statutory cause of action. Despite the change in
nomenclature, our prior decisions and those of the Federal Circuit interpreting Sections 13
and 14 remain equally applicable.
Opposition No. 91235046
11
mark on the ground of likelihood of confusion. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000).
B. Priority
Because Applicant has not counterclaimed to cancel Opposer’s pleaded
registrations, priority is not at issue with respect to the marks and services identified
therein. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108,
110 (CCPA 1974). In any event, Opposer has established common law use of both
forms of its mark for administering a discount program for “heroes,” and providing
information about the discounts offered. 35 TTABVUE 2-8, 12 (Bowles Aff. ¶¶ 2-27,
36-39).
C. Will the Marks and Sources of the Goods Be Confused?
Our determination under Section 2(d) is based on an analysis of all of the
probative evidence of record bearing on the likelihood of confusion. In re E.I. du Pont
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth
factors to be considered); see also In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key
considerations are the similarities between the marks and the similarities between
the services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
USPQ 24, 29 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the
cumulative effect of differences in the essential characteristics of the goods and
differences in the marks.”). Opposer bears the burden of establishing that there is a
likelihood of confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d
at 1848. We consider the likelihood of confusion factors about which there is evidence
Opposition No. 91235046
12
and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-
63 (Fed. Cir. 2019).
We focus here on Opposer’s pleaded ’086 Registration for the mark HOMES FOR
HEROES in standard characters for Opposer’s non-real estate discount program. If
we find confusion likely between Applicant’s involved mark and Opposer’s standard
character mark for non-real estate discounts, we need not consider the likelihood of
confusion between Applicant’s mark and the marks and services in Opposer’s other
pleaded registrations. On the other hand, if we find no likelihood of confusion between
Applicant’s mark and the mark in Opposer’s pleaded ’086 Registration, we would not
find confusion likely between Applicant’s mark and Opposer’s other pleaded marks.
In re Max Capital Grp., 93 USPQ2d 1243, 1245 (TTAB 2010).
1. The Goods and Services
The parties’ services are legally identical in-part because Applicant’s “providing
on-line web directory services featuring hyperlinks to the websites of businesses or
service providers who do business with first responders, police, firemen, veterans,
teachers, nurses, and active-duty military, and employees of other governmental or
non-profit entities” is substantively identical to Opposer’s “providing a website
permitting users to locate businesses and organizations providing savings to military
members and veterans, peace officers, firefighters, emergency medical technicians,
and other community heroes, and links to the websites of such participating
businesses and organizations.” Indeed, not only does Applicant intend to offer exactly
what Opposer offers – a website which identifies (“on-line web directory services”)
and links to (“featuring hyperlinks”) other businesses – but both parties identify and
Opposition No. 91235046
13
link to the same types of businesses (those which focus on serving the military,
veterans, police and firemen). Furthermore, Applicant’s “advertising and directory
services, namely, promoting the services of others by providing a web page featuring
links to the websites of others” encompasses, and is thus legally identical to,
Opposer’s “providing a website which features advertisements for businesses and
organizations providing savings to military members and veterans, peace officers,
firefighters, emergency medical technicians, and other community heroes.”
Because the services are in-part identical and legally identical, we must presume
that the channels of trade and classes of purchasers are as well. In re Viterra Inc.,
671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there was no
evidence regarding channels of trade and classes of consumers, the Board was
entitled to rely on this legal presumption in determining likelihood of confusion);
American Lebanese Syrian Associated Charities Inc. v. Child Health Research
Institute, 101 USPQ2d 1022, 1028 (TTAB 2011). Of course, the record also establishes
that the parties’ identical services in fact travel in the same channels of trade to the
same classes of consumers: website directories for and advertisements to “heroes,”
including police, firemen, military personnel and veterans. These factors weigh
heavily in support of finding a likelihood of confusion.
The identity of the services and their overlapping channels of trade and classes of
purchasers not only weigh heavily in favor of finding a likelihood of confusion, but
also reduce the degree of similarity between the marks necessary to find a likelihood
Opposition No. 91235046
14
of confusion. In re Viterra, 101 USPQ2d at 1908; In re Mighty Leaf Tea, 94 USPQ2d
at 1260; Max Capital, 93 USPQ2d at 1248.
2. Strength of Opposer’s Mark
Before comparing the marks, we consider the strength of Opposer’s mark, as that
impacts the scope of protection to which it is entitled. There are two types of strength:
conceptual and commercial. 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).”).
Because Opposer’s mark is registered, we must presume that it is inherently
distinctive, i.e. that it is at worst suggestive of Opposer’s services. 15 U.S.C. § 1057(b)
(registration is “prima facie evidence of the validity of the registered mark”); In re
Fiesta Palms, LLC, 85 USPQ2d 1360, 1363 (TTAB 2007) (when mark is registered on
the Principal Register, “we must assume that it is at least suggestive”). While
Opposer’s mark is valid and inherently distinctive, the record reveals that it is highly
suggestive.
Indeed, the ’086 Registration includes a disclaimer of HOMES. Moreover,
Applicant has established that the term FOR HEROES is commonly used in
connection with goods and services provided to military personnel, veterans, police,
firemen, first responders and others deemed “heroes.” Specifically, third-party
websites use the term in connection with charitable and other services provided to
military personnel or veterans, such as “Hotels for Heroes,” “Building Homes for
Heroes,” “Racing for Heroes,” “Help for Heroes,” “Companions for Heroes” and several
others. 38 TTABVUE 6-10, 12-15, 17-21.
Opposition No. 91235046
15
Similarly, Applicant introduced a number of third-party registrations for marks
which include the term FOR HEROES for services provided to military personnel and
veterans, including:
Mark/Reg. No. Goods/Services
HELP FOR HEROES

Reg. No. 5798867
providing medical treatment services
and rehabilitation services for
individuals with mental health and
substance abuse problems and other
psychiatric disorders; alternative
medicine services, namely,
detoxification services and medical
services, namely, PTSD treatment
programs
MAKERS FOR HEROES (MAKERS
disclaimed)

Reg. No. 5761088
development of technological solutions
for wounded soldiers, namely, new
product design services, technology
research in the field of prosthetics
A PLACE FOR HEROES

Reg. No. 5758744
housing services for veterans, namely,
providing independent living facilities
for veterans; charitable services in the
field of providing temporary housing for
veterans; providing assistance for
veterans, namely, veteran assistance
services in the field of temporary
housing
HITS 4 HEROES

Reg. No. 5044110
charitable fundraising services by
means of organizing and conducting
fundraising events to benefit wounded
combat veterans
HOTELS FOR HEROES (HOTELS
disclaimed)

Reg. 43206399
providing a website featuring charitable
services, namely, providing free hotel
rooms to military service members and
their families for military personnel
hospitalized due to being wounded,
injured, or ill

9 This registration is owned by the same “Hotels for Heroes” mentioned above in connection
with the third-party website evidence.
Opposition No. 91235046
16
BUILDING HOMES FOR HEROES

Reg. No. 442093010
charitable services, namely, providing
assistance to wounded or disabled
veterans and their families of the United
States armed services in the form of
financial help for such veterans and
their families

and

charitable services, namely, providing
assistance to wounded or disabled
veterans and their families of the United
States armed services in the form of
building or supplying appropriate homes
for such veterans and their families
HOMES4WOUNDEDHEROES

Reg. No. 4294359
charitable services, namely, providing
residential homes to veterans and their
families

Id. at 27-32, 43-49.11 These third-party registrations essentially function as a
dictionary here, and “show the sense in which [the term FOR HEROES] is used in
ordinary parlance.”
In addition, “[a] real evidentiary value of third party
registrations per se is to show the sense in which … a mark
is used in ordinary parlance.” 2 McCarthy on Trademarks
and Unfair Competition § 11:90 (4th ed. 2015) (emphasis
added). “Third party registrations are relevant to prove
that some segment of the composite marks which both
contesting parties use has a normally understood and well

10 It appears that this registration may be owned by the same “Building Homes for Heroes”
entity mentioned above in connection with the third-party website evidence. Opposer claims
to have filed a lawsuit against the owner of this registration which ultimately settled, 35
TTABVUE 11 (Bowlen Aff. ¶ 34), but it appears that the settlement did not result in the
owner of this registration deleting either class of services in its registration.
11 Applicant also introduced a number of third-party pending applications, but applications
are evidence of nothing more than that they were filed. See generally In re JJ206, LLC, 120
USPQ2d 1568, 1570 (TTAB 2016). This point is perhaps especially relevant in this case,
because Opposer has established that it has an active and often successful trademark
enforcement program. 35 TTABVUE 9-12 (Bowles Aff. ¶¶ 31-35).
Opposition No. 91235046
17
recognized descriptive or suggestive meaning, leading to
the conclusion that that segment is relatively weak.” Id.;
see Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915, 917
(CCPA 1976) (even “if there is no evidence of actual use’ of
‘third-party registrations,” such registrations “may be
given some weight to show the meaning of the mark in the
same way that dictionaries are used”).

Juice Generation, Inc. v. GS Enterprises, LLC, 794 F.2d 1334, 115 USPQ2d 1671,
1675 (Fed. Cir. 2015).
In short, while HOMES FOR HEROES is a valid mark and entitled to protection,
it is highly suggestive of the consumers targeted by Opposer’s discount programs. All
else being equal, this allows third-parties to come closer to Opposer’s mark than they
could if Opposer’s mark was conceptually stronger.12
On the other hand, Opposer has established that its mark is commercially fairly
strong, at least with respect to the real estate-related discounts it has offered for
many years. Indeed, because the “heroes” Opposer serves have purchased over $5
billion in real estate through Opposer’s real estate-related discount program, which
has “more than 2,500 affiliates across all 50 states,” and “has the largest market
share of any program of its kind,” HOMES FOR HEROES is well known, at least
among “heroes.” 35 TTABVUE 12 (Bowlen Aff. ¶¶ 13, 14, 38). The mark’s renown is
reflected in fairly extensive media coverage of Opposer and its mark and real estate-
related discount program in U.S. News and World Report, Minnesota Business, Wink
News, Moultrie News, and the websites of WNDU, ABC30 and ABC57 News. Id. at

12 It should be pointed out, however, that Applicant’s evidence does not establish that FOR
HEROES is particularly weak for the services identified in Opposer’s pleaded ’086
Registration or Applicant’s involved application, i.e., directory and advertising services.
Opposition No. 91235046
18
282-308 (Bowlen Aff. Ex. 5). The large number of “heroes” exposed to Opposer’s real
estate discounts are also exposed to its non-real estate discounts, which are offered
on the same website. Thus, we must balance the mark’s conceptual weakness against
its commercial strength as we compare the marks.13
3. The Marks
The parties’ marks are more similar than dissimilar “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imps. Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689,
1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). Initially, we do not find
that there is a meaningful difference between the “4” in Applicant’s mark and the
“FOR” in Opposer’s, given their identical pronunciations and meanings in the context
of the marks as a whole and the services sold thereunder. That is, even consumers
seeing the marks will understand, despite the different appearance of their 4/FOR
components, that the “4” in Applicant’s mark is intended to be understood the same
way as the “FOR” in Opposer’s, and that they create the same commercial
impressions. See In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1084-86
(Fed. Cir. 2014) (affirming Board’s finding that TAKE 10! and TAKETEN are
confusingly similar).

13 While Applicant’s evidence of actual third-party use of marks containing FOR HEROES
counters, to some extent, Opposer’s evidence of commercial strength, Opposer’s evidence is
more probative and persuasive. The quantity of Applicant’s evidence of third-party use is not
particularly impressive, and its quality is lacking – Applicant only provided single
screenshots displaying the third-party uses, and it is often not clear exactly which goods or
services are being offered, much less how many consumers have been exposed to the third-
party marks.
Opposition No. 91235046
19
In fact, because they share FOR/4 HEROES and differ only in the term that
precedes FOR/4 HEROES, the marks look somewhat similar and sound quite similar.
The marks also convey similar meanings, because they both identify the relevant
consumers “for” whom the parties provide services: “heroes.”
While DEALS and HOMES obviously look and sound completely different, and on
their own convey completely different meanings, under the circumstances of this case,
we find that the terms are less different than they might appear at first glance.
Specifically, we do not consider the marks in the abstract. Rather, we consider them
in the context of the services in connection with which they are used, from the
perspective of the relevant consumers, in this case “heroes.” Cf. DuoProSS Meditech
Corp. v. Inviro Med. Devices Ltd., 695 F.3d 1247, 103 USPQ2d 1753, 1757 (Fed. Cir.
2012) (in context of descriptiveness, stating that marks should be considered in the
“context” of the services and that “[t]he commercial impression that a mark conveys
must be viewed through the eyes of a consumer”). In that context, and from that
perspective, the marks convey services specially tailored for “heroes,” which the
record reveals are commonly offered at special discounts “for heroes.” In fact, the lead
term in Applicant’s mark, DEALS, conveys a discount of unspecified nature, and
Applicant’s identification of services is broad enough to encompass “deals” on
“homes,” or other products or services, provided to “heroes.”
Furthermore, the term DEALS in Applicant’s mark is not only an apt description
of the core service both parties provide (discounts), but it is also a term which Opposer
also uses prominently in connection with its non-real estate discount services:
Opposition No. 91235046
20

35 TTABVUE 312, 327. And as Opposer points out, the non-real estate discount
section of Opposer’s website includes the term “deals” in its url:

Id. at 374. Thus, if any of the fairly large number of “heroes” familiar with Opposer’s
non-real estate discount program encounter Applicant’s mark, in the context of
Opposition No. 91235046
21
Applicant’s identical discount services provided to identical consumers, they may
assume that Opposer and Applicant are somehow affiliated or that their discounts
come from the same ultimate source. Similarly, any “heroes” familiar with Applicant’s
DEALS 4 HEROES program may assume, given the broad, unlimited nature of
Applicant’s DEALS, that Opposer’s HOMES FOR HEROES discount program is
merely an offshoot, affiliate or licensee. The question here is whether the marks are
sufficiently similar in terms of their overall commercial impression that confusion as
to the source of the services offered under the marks is likely to result. Coach Servs.,
101 USPQ2d at 1721; San Fernando Elecs. Mfg. Co. v. JFD Electronics Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Rests. Inc. v. Morrison Inc.,
23 USPQ2d 1735, 1741 (TTAB 1991). Here, under the fairly unique circumstances
presented, we find that they are.
Turning back to the strengths and weaknesses of Opposer’s mark, and more
specifically balancing the number and types of third-party services provided FOR
HEROES against the significant recognition Opposer’s mark enjoys among relevant
consumers, we find that Opposer’s mark is not so conceptually weak that it is
unentitled to protection against the registration of Applicant’s mark. Not only does
the mark’s commercial strength mitigate its conceptual weakness here, but the
parties are offering legally and factually identical services in the same trade channels
to the exact same “heroes” under marks which both end with FOR HEROES. Opposer
uses the term “deals” − which is the only portion of Applicant’s mark which
differentiates it from Opposer’s − in connection with its services.
Opposition No. 91235046
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We hasten to add that Opposer’s mark may very well be too weak to be entitled to
protection against marks used for goods and services which are merely related, rather
than identical, to Opposer’s, but here the services are simply too close; they are
identical and targeted to the exact same “heroes.” Furthermore, as indicated above,
additional “circumstances surrounding their marketing are such that they could give
rise to the mistaken belief that [the parties’ services] emanate from the same source.”
Coach Servs., 101 USPQ2d at 1722 (quoting 7-Eleven Inc. v. Wechsler, 83 USPQ2d
1715, 1724 (TTAB 2007)). This factor weighs in favor of finding a likelihood of
confusion, but only slightly.
4. Whether the Services are Subject to Impulse Purchase
Perhaps not surprisingly, Opposer argues that “relevant consumers will not take
extra care in purchasing services related to discount offerings,” 46 TTABVUE 37,
while Applicant argues that they will. 47 TTABVUE 14. We agree with Opposer, at
least with respect to its pleaded ’086 Registration. In fact, Opposer’s non-real estate
discounts are for ordinary services including lawn care and restaurants, and are for
stores such as Target, Under Armour and 1-800-FLOWERS. 35 TTABVUE 239, 322,
373, 378, 385. We must base our decision on the “least sophisticated potential
purchasers” for these services, who would not all be assumed to exercise much care
in taking advantage of these types of discounts. Indeed, discounts represent “free
money,” rather than an expense consumers must incur. See e.g. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162-63 (Fed.
Cir. 2014). This factor also supports a finding of likelihood of confusion.
Opposition No. 91235046
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IV. Conclusion
The services are in part identical and we must presume, and the record reveals,
that the channels of trade are the same and that the classes of purchasers are
identical. In addition, the marks are more similar than dissimilar, as they both end
with FOR HEROES. While we have considered that Opposer’s mark is conceptually
weak, and this case therefore presents a close question, Opposer’s mark is not so
highly suggestive or diluted by third-party use as to prevent confusion when
consumers encounter Applicant’s similar mark in connection with identical services.
To the extent we have doubt about the likelihood of confusion between the marks, we
resolve that doubt in favor of Opposer. Hewlett-Packard Co. v. Packard Press, Inc.,
281 F.3d 1261, 62 USPQ2d 1001, 1003 (Fed. Cir. 2002) (“This court resolves doubts
about the likelihood of confusion against the newcomer because the newcomer has
the opportunity and obligation to avoid confusion with existing marks.”); In re Shell
Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1691 (Fed. Cir. 1993).

Decision: The opposition to registration of Applicant’s mark on the ground of
likelihood of confusion is sustained.