MediaNews Group Interactive, Inc.

Trademark Trial and Appeal Board

Oct 24, 2008

No. 78433038 (T.T.A.B. Oct. 24, 2008)

Mailed: October 24, 2008
PTH

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re MediaNews Group Interactive, Inc.
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Serial No. 78433038
_______

Sabrina C. Stavish of Sheridan Ross P.C. for MediaNews
Group Interactive, Inc.

Jason Paul Blair, Trademark Examining Attorney, Law Office
104 (Chris Doninger, Managing Attorney).
_______

Before Hohein, Hairston and Walters, Administrative
Trademark Judges.

Opinion by Hairston, Administrative Trademark Judge:

MediaNews Group Interactive, Inc. has filed an
application to register the mark BAY HOMESITE (in standard
character form) for services identified as:
real estate marketing services, namely, on-line
services featuring real estate listings and virtual
tours of residential and commercial real estate;
providing a web site at which users can offer goods
for sale and buy goods offered by others; providing
a web site which features advertisements for the
goods and services of others; providing information
about automobiles for sale by means of the
Internet; providing information about employers and
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser No. 78433038
2
career opportunities by means of the Internet in
International Class 35; and

providing information about real estate leasing by
means of the Internet in International Class 36.1

The trademark examining attorney has refused
registration under Section 2(d) of the Trademark Act on the
ground that applicant’s mark so resembles the registered
mark HOMESITE for “on-line database inquiry and posting
services in the field of real estate, namely, dissemination
of advertising for others in the field of real estate via
on-line wide area, global computer networks, providing on-
line sites and home pages” in International Class 35 and
“real estate services, namely, real estate listing,
property management and agency services” in International
Class 36,2 as to be likely to cause confusion, mistake or
deception.
The examining attorney also has required that
applicant disclaim the word BAY apart from the mark as
shown, and refused registration of applicant’s mark absent
such a disclaimer. Section 6 of the Trademark Act.
When the refusals were made final, applicant appealed.

1 Application Serial No. 78433038, filed on June 10, 2004, based
on an allegation of first use anywhere and in commerce on June 7,
2004 as to the services in both classes.
2 Registration No. 2173292, issued on July 14, 1998; renewed.
Ser No. 78433038
3
Applicant and the examining attorney have filed briefs.3
Disclaimer Requirement
We turn first to the refusal based on applicant’s
failure to comply with the examining attorney’s requirement
for a disclaimer of the word BAY apart from the mark as
shown.
The examining attorney may require the applicant to
disclaim an unregistrable component of a mark otherwise
registrable. Section 6 of the Trademark Act. Merely
descriptive terms are unregistrable, Section 2(e)(1) of the
Trademark Act, and therefore are subject to disclaimer if
the mark is otherwise registrable. Failure to comply with
a disclaimer requirement is a ground for refusal of
registration. See In re Omaha National Corp., 819 F.2d
1117, 2 USPQ2d 1859 (Fed. Cir. 1987); and In re Box
Solutions Corp., 79 USPQ2d 1953 (TTAB 2006).
A term is merely descriptive of goods or services,
within the meaning of Section 2(e)(1), if it forthwith

3 We grant applicant’s request in its brief that we take judicial
notice of definitions from the online version of The American
Heritage Dictionary of the English Language (4th ed. 2000) and the
online Encarta World English Dictionary, North American Edition.
The Board may take judicial notice of dictionary definitions,
including online dictionaries that exist in printed format. In
re Red Bull GmbH, 78 USPQ2d 1375 (TTAB 2006). Also, we may take
judicial notice of information from the Encarta Dictionary, even
though it is not available in printed format because it is a
widely known reference work that is readily available online and
in a CD-Rom format.
Ser No. 78433038
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conveys an immediate idea of an ingredient, quality,
characteristic, feature, function, purpose or use of the
goods or services. See, e.g., In re Gyulay, 820 F.2d 1216,
3 USPQ2d 1009 (Fed. Cir. 1987), and In re Abcor Development
Corp., 588 F.2d 811, 200 USPQ 215 (CCPA 1978). Moreover,
in order to be merely descriptive, the term must
immediately convey information as to the ingredients,
qualities or characteristics of the goods or services with
a “degree of particularity.” See In re TMS Corporation of
the Americas, 200 USPQ 57 (TTAB 1978); and In re Entenmanns
Inc., 15 USPQ2d 1750 (TTAB 1990), aff’d, unpub’d, Fed. Cir.
February 13, 1991. It has long been acknowledged that
there is a thin line between terms that are merely
descriptive and those that are suggestive. See in re
Atavio Inc., 25 USPQ2d 1361 (TTAB 1992).
It is the examining attorney’s position that the term
BAY is merely descriptive of a characteristic of
applicant’s real estate marketing services in Class 35 and
applicant’s Class 36 services, i.e., providing information
about real estate leasing by means of the Internet.
Specifically, the examining attorney maintains that the
term BAY conveys that such services “deal with real estate
in an area close to a bay. In this specific case, the bay
is San Francisco Bay, which features a body of water
Ser No. 78433038
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partially closed by land but with a wide mouth affording
access to the sea.” (Brief, p. 7). The examining attorney
points out that applicant’s specimen, which consists of
printouts downloaded from applicant’s website
“http://www.bayhomesite.com,” includes references to “Real
Estate for the Bay Area,” “Rentals-Quick Search Location:
San Francisco, East Bay, North Bay, South Bay,” and “Bay
Area Living.” In support of the refusal in this regard,
the examining attorney submitted a definition from The
American Heritage Dictionary of the English Language (4th
ed. 2000) wherein the word “bay” is defined, in relevant
part, as “[a] body of water partially enclosed by land but
with a wide mouth, affording access to the sea.” Also, the
examining attorney submitted a map downloaded from the
Internet showing that San Francisco is located to the west
of San Francisco Bay. The examining attorney also made of
record printouts from third-party registrations of marks
which include the word BAY, in which the word has been
disclaimed. The registrations are as follows:
Registration No. 1399741 for the mark SAN FRANCISCO BAY
STYLE PISANO and design for bakery goods (SAN FRANCISCO BAY
STYLE disclaimed); Registration No. 2373616 for the mark
BAY AREA 2000 for television programming and a continuing
news show (BAY AREA disclaimed); Registration No. 2394041
Ser No. 78433038
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for the mark SF BAY NATURALS for balls for relieving stress
(SF BAY disclaimed); Registration No. 2323682 for the mark
BAY LINK and design for promoting the public awareness of
the availability and importance of a network of ecological
sites within the Chesapeake Bay watershed (BAY disclaimed);
Registration No. 2410273 for the mark SF BAY NATURALS and
design for various cosmetic preparations (SF BAY
disclaimed); Registration No. 2452119 for the mark BAY
CITIES BANK and design for banking and financial services
(BAY CITIES BANK disclaimed); Registration No. 2559994 for
the mark THE SAN FRANCISCO BAY S.F.L.V. for business
management of resort hotels, casinos and theme parks (SAN
FRANCISCO BAY disclaimed); Registration No. 2659062 for the
mark CORNET BAY and design for food items (CORNET BAY
disclaimed); Registration No. 2703227 for the mark THE CITY
BY THE BAY, LAS VEGAS EXPERIENCE for business management of
resort hotels, casinos and theme parks (THE CITY BY THE BAY
disclaimed); and Registration No. 2686800 for the mark THE
BIG BAY for promoting business and tourism (BAY
disclaimed).
Applicant, in urging reversal of the refusal to
register absent a disclaimer, has submitted the identical
dictionary definition of the word “bay,” and the first 40
hits from the results of a “Google” search of the word
Ser No. 78433038
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“bay.” Included among these hits are references not only
to San Francisco Bay, but the Green Bay Packers and Tampa
Bay Buccaneers football teams, Massachusetts Bay
Transportation Authority, Chesapeake Bay Program, Mandalay
Bay Resort and Casino, and Anchor Bay Entertainment.
Applicant maintains that the definition and “hits” show
that “bay” is a general term which may refer to any bay,
and not just San Francisco Bay. Applicant argues that the
term “bay” is at most suggestive of services offered near
or related to an area with a bay.
Lastly, applicant submitted printouts of third-party
registrations of marks which, while including the word BAY,
such word has not been disclaimed. Applicant maintains
that these registrations are all owned by entities whose
addresses indicate that they are doing business in the San
Francisco Bay area. The registrations are as follows:
Registration No. 2928234 for the mark SANTA BY THE BAY for
retail store services featuring Christmas decorations and
other items; Registration No. 2467804 for the mark HEART OF
THE BAY for chamber of commerce services; Registration No.
2389612 for the mark BAY TO BAY DISTRIBUTION for
distributorship services; Registration No. 2815936 for the
mark MONTEREY BAY HEATHER for wholesale nursery services;
Registration No. 2323187 for the mark ARCADIA BAY for
Ser No. 78433038
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retail store services featuring food and beverages, and
retail convenience store services; Registration No. 1639238
for the mark BAY ALARM COMPANY for burglar and security
alarm monitoring; Registration No. 2875679 for the mark BAY
ELITE REALTY for real estate brokerage services;
Registration No. 2235360 for the mark BAY VIEW CREDIT for
business and consumer services; Registration No. 1911751
for the mark BAY $$$ NET for financial services; and
Registration No. 1460838 for the mark HARBOR BAY for a
community newspaper, financial management services,
construction and repair services, telephone exchange
services, transportation services, physical education
services, and general health care services.
Considering all of the evidence and the arguments of
the examining attorney and applicant, we find that it has
not been established that the term BAY is merely
descriptive of applicant’s identified real estate services.
Some degree of thought or imagination must be used to get
from BAY to the idea that applicant’s real estate services
involve marketing and providing leasing information about
real estate properties located in the San Francisco “bay
area.” That is, there is an element of incompleteness
which we believe individuals encountering the term must
interpret in order to arrive at the conclusion that
Ser No. 78433038
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applicant markets and provides leasing information about
real estate properties located in the “bay area.” We note
that only two of the third-party registrations relied upon
by the examining attorney contain disclaimers of the term
BAY per se; the other registrations contain disclaimers of
more “complete” terms such as SAN FRANCISCO BAY STYLE; SF
BAY; and BAY AREA. In short, we are not persuaded by the
third-party registrations submitted by the examining
attorney that BAY per se is merely descriptive of
applicant’s identified real estate services. Furthermore,
we note that if there is any doubt about the merely
descriptive character of a term, that doubt is resolved in
applicant’s favor.
In view of the foregoing, we find that the term BAY,
when used in connection with applicant’s identified real
estate services, is not merely descriptive. We therefore
reverse the examining attorney’s requirement for a
disclaimer of BAY as to both classes of services in the
application, and we reverse the refusal to register the
mark absent submission of such a disclaimer.
Likelihood of Confusion
We turn next to the Section 2(d) refusal. As
previously indicated, applicant seeks registration of BAY
HOMESITE for the following services:
Ser No. 78433038
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real estate marketing services, namely, on-line
services featuring real estate listings and virtual
tours of residential and commercial real estate;
providing a web site at which users can offer goods
for sale and buy goods offered by others; providing
a web site which features advertisements for the
goods and services of others; providing information
about automobiles for sale by means of the
Internet; providing information about employers and
career opportunities by means of the Internet in
International Class 35; and

providing information about real estate leasing by
means of the Internet in International Class 36.

The cited registration is for the mark HOMESITE for the
following services:
on-line database inquiry and posting services in
the field of real estate, namely, dissemination of
advertising for others in the field of real estate
via on-line wide area, global computer networks,
providing on-line sites and home pages in
International Class 35; and

real estate services, namely, real estate listing,
property management and agency services” in
International Class 36.

Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In re
Majestic Distilling Co., Inc. 315 F.3d 1311, 65 USPQ2d 1201
(Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities
Ser No. 78433038
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between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We turn first to the du Pont factors of the similarity
or dissimilarity of the services, trade channels and
purchasers. Applicant does not dispute that its on-line
real estate marketing services and services of providing
information about real estate leasing by means of the
Internet4 are legally identical or otherwise closely related
to registrant’s on-line database inquiry and posting
services in the field of real estate and real estate
listing, property management and agency services.
Moreover, the channels of trade for such services
overlap in that applicant’s real estate marketing services
are offered “on-line” and its information services are
offered “by means of the Internet,” and registrant’s
database inquiry and posting services are offered “on-
line.” Further, there are no limitations as to the
channels of trade for registrant’s real estate listing,
property management and agency services, and we must

4 We note that the examining attorney confined his analysis to
these particular services of applicant, and we therefore have
done the same. Likelihood of confusion must be found if there is
likely to be confusion with respect to any of applicant’s
services that come within the recitation of services in the cited
registration. Tuxedo Monopoly, Inc. v. General Mills Fun Group,
648 F.2d 1335, 209 USPQ 986 (CCPA 1981).
Ser No. 78433038
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accordingly presume that such services move in all normal
channels of trade for such services, including on-line/by
means of the Internet. As to the classes of purchasers,
because there are no limitations in applicant’s recitation
of services and registrant’s recitation of services in this
regard, we must accordingly presume that applicant’s and
registrant’s services are marketed to all normal classes of
purchasers for such services, including ordinary consumers.
In re Elbaum, 211 USPQ 639 (TTAB 1981).
In sum, applicant’s and registrant’s services are
identical or otherwise so closely related that, if offered
under the same or similar marks, confusion as to the source
of sponsorship thereof would be likely to occur.
With respect to the marks, we must consider whether
applicant’s mark and registrant’s mark, when considered in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
Although the marks 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
National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir.
1985). Furthermore, the test is not whether the marks can
Ser No. 78433038
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be distinguished when subjected to a side-by-side
comparison, but rather whether the marks are sufficiently
similar in terms of their commercial impression that
confusion as to the source of the services 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).
Applicant’s mark is BAY HOMESITE; the cited registered
mark is HOMESITE. Applicant has essentially taken the
entirety of the registered mark and added the word BAY to
it. The additional word BAY in applicant’s mark is
insufficient to distinguish the mark from that of the
registrant.
Applicant, in contending that the marks are not
confusingly similar, asserts that the word HOMESITE is
“descriptive if not generic, for a web site featuring
homes” (Brief, p. 11); and that the word HOMESITE is so
widely used in connection with real estate related services
that the commonality of the term is an insufficient basis
upon which to find that the marks are confusingly similar.
In support of its position, applicant submitted a
dictionary definition from the Encarta Dictionary wherein
Ser No. 78433038
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the word “homesite” is defined as “building site: a plot of
land on which a new home can be or is constructed.” In
addition, applicant submitted the results of a search of a
database of common law trademarks, “www.trademark.com,”
which revealed 66 businesses using “Homesite(s) or
“Home site(s)” in their names,” and the results of a search
of an on-line telephone directory, “wwwdexoline.com,” which
revealed several telephone listings for entities doing
business in Texas, Pennsylvania, Virginia and Massachusetts
using “Homesite(s)” or “Home site(s)” in business names.
Applicant’s evidence does not compel a different
result in determining the likelihood of confusion. First,
applicant’s contention that registrant’s entire 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).
Furthermore, as the Federal Circuit has stated, “[t]he
probative value of third-party trademarks depends entirely
upon their usage.” Palm Bay Imports, Inc. v. Veuve
Clicquot Ponsardin Maison Fondee, supra at 1693. At best,
the uses comprise evidence that the purchasing public could
potentially be cognizant of third-party use of the term
“Homesite.” The record, however, is devoid of any evidence
Ser No. 78433038
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of the purchasing public’s awareness of such uses; nor is
there any information as to, for example, how long the
businesses have been operational or the extent of the
public exposure to the businesses. Where the “record
includes no evidence about the extent of [third-party] uses
… [t]he probative value of this evidence is thus minimal.”
Han Beauty, Inc. v. Alberto-Culver Co., 236 F.3d 1333, 57
USPQ2d 1557, 1561 (Fed. Cir. 2001). A further problem with
this evidence is that it is not readily apparent from some
of the business names that such businesses are real estate
related. For the foregoing reasons, we cannot conclude
from the evidence that there is such significant use of
“Homesite” marks or trade names that consumers are likely
to make a distinction between registrant’s mark and
applicant’s mark where the marks are used in connection
with identical and otherwise closely related real estate
related services.
Applicant also argues that registrant’s HOMESITE mark
is weak and therefore entitled to only a limited scope of
protection because of the coexistence of five third-party
registrations and an application for marks that contain the
words “HOME” and “SITE” for real estate related services.
The third-party registrations and application are of
limited probative value for several reasons. Insofar as
Ser No. 78433038
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the third-party registrations are concerned, as applicant
acknowledges, such registrations are not evidence of use of
the marks shown therein. Thus, the registrations are not
proof that consumers are familiar with such marks so as to
be accustomed to the existence of the same or similar marks
in the marketplace. Furthermore, three of the
registrations are owned by the same entity and cover online
computer databases in the fields of building plans, home
warranties and building insurance; services which are
somewhat different from the services involved herein. Only
one of the third-party registrations covers services of the
type involved herein; the mark in that registration is THE
SITE FOR HOMES which is somewhat different from HOMESITE.
Insofar as the third-party application is concerned, such
application has no probative value other than as evidence
that the application was filed. In re Phillips-Van Heusen
Corp., 63 USPQ2d 1047 (TTAB 2002). Nevertheless, we note
that even if marks which include the word HOMESITE are
considered to be weak due to an assertedly high degree of
suggestiveness conveyed by such term, even weak marks are
entitled to protection where confusion is likely. Here,
notwithstanding any alleged weakness in the term HOMESITE,
the registered mark HOMESITE is still similar in sound,
Ser No. 78433038
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appearance, connotation and commercial impression to
applicant’s mark BAY HOMESITE.
In conclusion, we find that because the marks are
similar, the services are identical or otherwise closely
related, and the channels of trade and purchasers overlap,
confusion is likely between applicant’s mark and the mark
in the cited registration.
Decision: The refusal to register the services in
both classes absent a disclaimer of BAY is reversed. The
refusal to register the services in both classes under
Section 2(d) of the Trademark Act is affirmed.