Keystone Homes, Inc.

Trademark Trial and Appeal Board

Jan 21, 2009

No. 77038390 (T.T.A.B. Jan. 21, 2009)

Mailed: January 21, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

Trademark Trial and Appeal Board
___________

In re Keystone Homes, Inc.
___________

Serial No. 77038390
___________

Robert A. Mullins of Mullins Law Firm for Keystone Homes,
Inc.

Dawna Beryl Gardner, Trademark Examining Attorney, Law
Office 112 (Angela Wilson, Managing Attorney).
____________

Before Walters, Bucher and Zervas, Administrative Trademark
Judges.

Opinion by Walters, Administrative Trademark Judge:

Keystone Homes, Inc. has filed an application to
register the mark shown below on the Principal Register for
“construction of new houses; repair and maintenance of new
homes under warranty,” in International Class 37.1 The
application includes a disclaimer of BUILD apart from the
mark as a whole, and a description of the mark as “The mark

1 Serial No. 77038390, filed November 7, 2006, based on use of the mark
in commerce, alleging first use and use in commerce as of August 18,
2006.

THIS OPINION
IS NOT A PRECEDENT OF
THE TTAB
Serial No. 77038390

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consists of the stylized word ‘Keystone’ underneath the
outline of a roof with a chimney, with the words ‘Dream.
Build. Live.’ below the word ‘Keystone’ beginning in between
the letters ‘y’ and ‘s.’”

The examining attorney has issued a final refusal to
register under Section 2(d) of the Trademark Act, 15 U.S.C.
1052(d), on the ground that applicant’s mark so resembles
the mark “DREAM. BUILD. LIVE.,” previously registered for
“residential building construction,” in International Class
37,”2 that, if used on or in connection with applicant’s
services, it would be likely to cause confusion or mistake
or to deceive. The cited registration includes a disclaimer
of BUILD apart from the mark as a whole.
Applicant has appealed. Both applicant and the
examining attorney have filed briefs. We affirm the refusal
to register.

2 Registration No. 2979191, issued July 26, 2005, from an application
filed August 28, 2003. The registration is owned by Veridian Homes,
LLC.

Serial No. 77038390

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Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion issue. See In re E. I. du Pont de Nemours and
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 Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these factors,
we keep in mind that “[t]he fundamental inquiry mandated by
Section 2(d) goes to the cumulative effect of differences in
the essential characteristics of the goods and differences
in the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re
Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB
1999) and the cases cited therein. The relevant du Pont
factors in this proceeding are discussed below.
The Services
We consider, first, the services. In making our
determination under the second du Pont factor, we look to
the services as identified in the involved application and
cited registration. See Octocom Systems, Inc. v. Houston
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Computers Services 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 regardless of what the record may reveal as to
the particular nature of an applicant’s goods, the
particular channels of trade or the class of purchasers to
which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 473 F.2d 901, 177
USPQ 76, 77 (CCPA 1973) (“Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of goods.”)
There is no question that applicant’s services recited
as “construction of new homes” are essentially a subset of
registrant’s “residential building construction,” which
would encompass construction of new homes as well as home
additions and renovations. In other words, applicant’s
services as identified are legally identical to services
encompassed by registrant’s recitation of services. We do
not consider applicant’s additionally recited services
because the examining attorney need show only that at least
one of the recited services in the application is the same
as or related to the services of the cited registration.
See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648
F.2d 1335, 209 USPQ 986, 988 (CCPA 1981).
Serial No. 77038390

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Applicant’s argument that the services are
geographically distinct and unlikely to overlap is
unavailing as federal registration is nationwide in scope.
This du Pont factor of the similarities or
dissimilarities of the services weighs against applicant.
Trade Channels, Purchasers and Conditions of Sale
Inasmuch as the identifications of services in both the
involved application and the cited registration are not
limited to any specific channels of trade, we presume that
the services would be offered in all ordinary trade channels
for these services and to all normal classes of purchasers.
In this case, the trade channels and purchasers are the same
or, at least, overlapping. See In re Linkvest S.A., 24
USPQ2d 1716 (TTAB 1992). This factor weighs against
applicant.
Relevant purchasers comprise the general public. In
view of the obvious expense of new home construction, the
purchase of such services is certainly likely to be
undertaken with great care. Thus, while the expense and
degree of care involved herein weigh in applicant’s favor,
we must remember that the general consumer includes buyers
of all levels of purchasing sophistication. Moreover, even
consumers who exercise a high degree of care are not
necessarily knowledgeable regarding the trademarks at issue,
and therefore immune from source confusion. In re Wilson,
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57 USPQ2d 1863, 1865-66 (TTAB 2001)(where marks are very
similar and goods related, confusion may be likely even
among sophisticated purchasers); In re Decombe, 9 USPQ2d
1812, 1814-1815 (TTAB 1988)(“Being knowledgeable and/or
sophisticated in a particular field does not necessarily
endow one with knowledge and sophistication in connection
with the use of trademarks.”).
The Marks
Considering, next, the marks, we note that in
determining likelihood of confusion, a lesser degree of
similarity between two marks is required when the marks are
applied to identical goods or services. HRL Associates,
Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989),
aff’d 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir. 1990). See
also In re J.M. Originals, 6 USPQ 1393 (1987).
The question is whether applicant’s mark and the
registered mark, when viewed in their entireties, are
similar in terms of appearance, sound, connotation and
commercial impression. The test 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 impressions
that confusion as to the source of the services offered
under the respective marks is likely to result.
Furthermore, although the marks at issue must be considered
Serial No. 77038390

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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 National Data Corp., 753 F.2d 1056, 224 USPQ 749
(Fed. Cir. 1985).
The examining attorney contends that the marks are
similar because both include the slogan “DREAM. BUILD.
LIVE.”; that the addition of the word KEYSTONE and the roof
design is insufficient to distinguish the marks; and that
the connotations of this slogan are the same in both marks,
noting that the excerpted portions of the websites of
applicant and registrant both market to consumers “looking
for the dream of a new home in a newly planned
neighborhood.” (Brief, p. 8.)
Applicant contends that the marks are substantially
different in appearance; and that the registered mark is a
weak mark because it is merely descriptive, making the
following argument in this regard:
According to Merriam Webster’s dictionary,
http://www.m-w.com/dictionary/liveand ttp://www.m-
w.com/dictionary/dream, one definition of the term
“live” is “to occupy a home” or “dwell;” and a
definition of the term “dream” is “something that
fully satisfies a wish” or “ideal.” Both define
the actual purpose and use of Registrant’s
services for which consumers obtain them.
Consumers have an ideal home. They obtain a
builder’s services to construct and build that
Serial No. 77038390

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ideal home in which they intend and do live in
upon final completion of builder’s services.
(Response of April 12, 2008.)
This argument is not well taken. Applicant’s contention
that registrant’s mark is descriptive constitutes an
impermissible collateral attack on the cited registration.
Such an attack will not be entertained in an ex parte
appeal. See, e.g., In re Peebles, Inc., 23 USPQ2d 1795
(TTAB 1992).
Applicant also argues that the registered mark is weak
and submitted, in support of this argument, Google search
results for the phrase “Dream. Build. Live.” These search
results are of limited probative value. Several of the
entries clearly refer to applicant or registrant. The
remaining entries are ambiguous and could refer to third
parties, applicant or registrant. Applicant contends that
the meanings of the individual words “live” and “dream”
describe what the target consumer is looking for in new home
construction and, thus, the registered mark is weak. We are
not persuaded by this argument. In fact, there is nothing
in this record to suggest that the purported connection
between the meanings of these words and the identified
services is other than attenuated and abstract.
Considering applicant’s mark, we find that the design
elements of the mark do not distinguish it from registrant’s
mark. The line suggesting a rooftop is a minimal design
Serial No. 77038390

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element and, further, it is suggestive of construction
services. Moreover, it would not be articulated in
referring to the services.
On the other hand, KEYSTONE appears to be an arbitrary
term in connection with the identified services and it
appears in the mark in significantly larger lettering than
the phrase DREAM. BUILD. LIVE. However, KEYSTONE is also
the arbitrary and dominant part of applicant’s trade name,
i.e., Keystone Homes, Inc. In this regard, we note that the
addition of a trade name to a registered mark does not
generally avoid confusion. Menendez v. Holt, 128 U.S. 514,
521 (1888). The addition of a trade name or house mark may
avoid confusion only when there are recognizable differences
between the common elements of the marks. See Rockwood
Chocolate Co. v. Hoffman Candy Co., 372 F.2d 552, 152 USPQ
599 (CCPA 1967) (ROCKWOOD BAG-O-GOLD for candy not
confusingly similar to CUP-O-GOLD for candy). Here, the
DREAM. BUILD. LIVE. portions of applicant’s and registrant’s
marks are identical and the addition of applicant’s KEYSTONE
trade name does not overcome the similarity of the marks.
See In re C.F. Hathaway Co., 190 USPQ 343 (TTAB 1976)
(HATHAWAY GOLF CLASSIC for knitted sports shirts confusingly
similar to GOLF CLASSIC for men’s hats).
Serial No. 77038390

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In a similar case, the Board held that the mark SPARKS
and design and SPARKS BY SASSAFRAS and design were similar
in sound, appearance, and meaning.
Those already familiar with registrant's use of its
mark in connection with its goods, upon encountering
applicant's mark on applicant's goods, could easily
assume that "sassafras" is some sort of house mark that
may be used with only some of the "SPARKS" goods.
Conversely, those familiar with only applicant's mark
would, upon encountering the registered mark on related
goods, assume that all "SPARKS" products come from a
single source, and that that source was in some
instances further identified with the words "by
sassafras."

In re Apparel Ventures, Inc., 229 USPQ 225, 226 (TTAB
1986).
In any case, where likelihood of confusion is the
issue, we must view the marks in their entireties. When the
word KEYSTONE and the rooftop design are added to the phrase
DREAM. BUILD. LIVE., the marks are still extremely similar
in at least sound, meaning and commercial impression, if not
also in appearance. Wella Corp. v. California Concept
Corp., 558 F.2d 1019, 1022, 194 USPQ 419, 422 (CCPA
1977)(CALIFORNIA CONCEPT and design held likely to be
confused with CONCEPT for hair care products). In other
words, when we consider the marks as a whole, we consider
them to be more similar than dissimilar.
This du Pont factor also weighs against applicant.
In conclusion, when we consider the record and the
relevant likelihood of confusion factors, and all of
Serial No. 77038390

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applicant's arguments relating thereto, including those
arguments not specifically addressed herein, we conclude
that in view of the substantial similarity in the commercial
impressions of applicant’s mark and registrant’s mark as
discussed herein, their contemporaneous use on the identical
and overlapping services involved in this case is likely to
cause confusion as to the source or sponsorship of such
services.
Lastly, to the extent that there may be any doubt
on our finding of likelihood of confusion, we resolve that
doubt, as we must, in favor of registrant. See Giant Food,
Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ
390, 395 (Fed. Cir. 1983).
Decision: The refusal under Section 2(d) of the Act is
affirmed.