No. 86346318 (T.T.A.B. Jun. 2, 2016)

MT Real Estate, LLC

Trademark Trial and Appeal BoardJun 2, 2016

No. 86346318 (T.T.A.B. Jun. 2, 2016)

This Opinion is not a Precedent of the TTAB Mailed: June 2, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re MT Real Estate, LLC _____ Serial No. 86346689 Serial No. 86346318 _____ John L Lohr, Jr. of Hymson, Goldstein & Pantiliat PLLC, for MT Real Estate, LLC. Nicolas A. Coleman, Trademark Examining Attorney, Law Office 115, John Lincoski, Managing Attorney. _____ Before Seeherman, Zervas and Bergsman, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: MT Real Estate, LLC (“Applicant”) seeks registration on the Principal Register of the marks shown below, each consisting of the words MT REAL ESTATE and a design, and both for “commercial and residential real estate agency services; real estate agencies; real estate brokerage; real estate consultancy; real estate consultation; real estate procurement for others; residential real estate agency services,” in Class 36. Serial No. 86346318 Serial No. 86346689 - 2 - 1 2 In both applications, Applicant disclaimed the exclusive right to use the term “Real Estate.” The Trademark Examining Attorney has refused registration of Applicant’s marks under Section 2(d) of the Trademark Act of 1946, 15 U.S.C. § 1052(d), on the 1 Application Serial No. 86346318 was filed on July 23, 2014, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as July 7, 2014. 2 Application Serial No. 86346689 was filed on July 24, 2014, based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as July 1, 2014. Serial No. 86346318 Serial No. 86346689 - 3 - ground that Applicant’s marks so resemble the following registered MT marks, owned by one entity, as to be likely to cause confusion: 1. Registration No. 3964549 for the mark MT, in standard character form, for “real estate development,” in Class 37;3 2. Registration No. 3965950 for the mark MT and design, shown below, for “real estate development,” in Class 37;4 3. Registration No. 4033845 for the mark MT, in standard character form, for “real estate services, namely, condominium sales management,” in Class 35;5 and 4. Registration No. 4037471 for the mark MT and design, shown below, for “real estate services, namely, condominium sales management,” in Class 35.6 3 Registered on May 24, 2011. 4 Registered on May 24, 2011. 5 Registered on October 11, 2011. 6 Registered on October 11, 2011. Serial No. 86346318 Serial No. 86346689 - 4 - Because the two appeals involve common questions of fact and law and the record in both appeals is the same, we consolidate the appeals. See TBMP § 1214 (June 2015). 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 issue of likelihood of confusion. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also In re Majestic Distilling Co., Inc., 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.”). A. The similarity or dissimilarity of the marks. We turn first to the du Pont likelihood of confusion factor focusing on the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression. In re E. I. du Pont De Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). In a particular case, “two marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d Serial No. 86346318 Serial No. 86346689 - 5 - 1511, 1519 (TTAB 2009) (citing Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”)). “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). See also San Fernando Electric Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Industries, Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the cited marks with the design element contain an additional point of difference with Applicant's marks, we confine our analysis to Applicant's marks and the cited registrations for the marks in standard character form. That is, if confusion is likely between those marks, there is no need for us to consider the likelihood of confusion with the cited marks with design element; the standard character marks would be a sufficient basis for us to affirm the refusal of registration. Conversely, if Serial No. 86346318 Serial No. 86346689 - 6 - there is no likelihood of confusion between Applicant's marks and the cited marks in standard character form, then there would be no likelihood of confusion with the marks with design elements. See, e.g., In re Max Capital Group Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010). Marks presented in standard characters are not limited to any particular depiction. The rights associated with a mark in standard characters reside in the wording, or in this case the letters, and not in any particular display. Thus, Registrant is entitled to all depictions of its standard character mark regardless of the font style, size, or color. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1909-11 (Fed. Cir. 2012); Citigroup Inc. v. Capital City Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939 (Fed. Cir. 1983) (rejecting argument that a mark in typed format is distinct from a mark in a logo format; “[b]y presenting its mark in a typed drawing, a difference cannot legally be asserted by that party” (emphasis in original)).7 Because the similarity or dissimilarity of the marks is determined based on the marks in their entireties, the analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on the entire marks, not just part of the marks. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). On the other hand, there 7 Prior to November 2, 2003, “standard character” drawings were known as “typed” drawings. A typed mark is the legal equivalent of a standard character mark. TMEP § 807.03(i) (April 2016). Serial No. 86346318 Serial No. 86346689 - 7 - is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on a consideration of the marks in their entireties. In re National Data Corp., 224 USPQ at 751. With respect to Applicant’s marks, we find that the letters MT are the dominant portion of those marks because “the verbal portion of the mark is the one most likely to indicate the origin of the goods to which it is affixed.” See In re Viterra Inc., 671 F.3d 1358, 1362, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (quoting CBS Inc. v. Morrow, 708 F. 2d 1579, 1581-82, 218 USPQ 198, 200 (Fed. Cir 1983)). See also L.C. In re Kysela Pere et Fils Ltd., 98 USPQ2d 1261, 1267 (TTAB 2011) (in the mark HB and design, the letters HB “are the portion that will be articulated when a consumer refers to or calls for the goods.”); Licensing Inc. v. Berman, 86 USPQ2d 1883 (TTAB 2008) (“the design portion of opposer’s mark will not be spoken”). Moreover, the term “Real Estate” in Applicant’s marks is merely descriptive or generic of the subject matter of Applicant’s services and, therefore, has little or no source-indicating significance. It is well-settled that disclaimed, descriptive matter may have less significance in likelihood of confusion determinations. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re National Data Corp., 224 USPQ at 752); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997). Serial No. 86346318 Serial No. 86346689 - 8 - Thus, we find that Registrant’s MT marks in standard character form and Applicant’s marks are similar in terms of their appearance, sound, connotation and commercial impression because they all incorporate the arbitrary letters MT. B. The similarity or dissimilarity and nature of the services. In analyzing the similarity or dissimilarity and nature of the services, we must look to the services as identified in the applications and the cited registrations. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014) (quoting Octocom Sys., Inc. v. Houston Computers Servs., Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990)); In re Giovanni Food Co., 97 USPQ2d 1990, 1991 (TTAB 2011). We do not read limitations into the identification of services. Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983) (“There is no specific limitation and nothing in the inherent nature of Squirtco's mark or goods that restricts the usage of SQUIRT for balloons to promotion of soft drinks. The Board, thus, improperly read limitations into the registration”). It is not necessary that the services are similar or competitive in character to support a holding of likelihood of confusion; it is sufficient for such purposes that the services are related in some manner and/or that conditions and activities surrounding marketing of these services are such that they would or could be encountered by the same persons under circumstances that could, because of the similarities of the marks used with them, give rise to the mistaken belief that they originate from or are in some way associated with the same producer. Coach Servs., Inc. v. Triumph Learning Serial No. 86346318 Serial No. 86346689 - 9 - LLC, 101 USPQ2d at 1722; Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980); Oxford Pendaflex Corporation v. Anixter Bros. Inc., 201 USPQ 851, 854 (TTAB 1978). The Trademark Examining Attorney contends that the description of services in the application (“commercial and residential real estate agency services; real estate agencies; real estate brokerage; real estate consultancy; real estate consultation; real estate procurement for others; residential real estate agency services”) is broad enough to encompass the real estate development and condominium sales management services in the cited registrations.8 Applicant’s services are identified as “commercial and residential real estate agency services; real estate agencies; real estate brokerage; real estate consultancy; real estate consultation; real estate procurement for others; residential real estate agency services.” Registrant’s services are “real estate development” and “real estate services, namely, condominium sales management.” Likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the recitation of services in the applications and the services in the cited registrations. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015). 8 6 TTABVUE 9. Serial No. 86346318 Serial No. 86346689 - 10 - Because “consultancy” is defined as “a person or firm that provides consulting advice or services,”9 and “consultation” is defined as “the act of consulting; conference,”10 Applicant’s “real estate consultancy” and “real estate consultation” services must be read as meaning that Applicant is providing real estate advice. The word “development” is defined, inter alia, as “the act or process of developing; growth; progress” and “a large group of private houses or of apartment houses, often of similar design, constructed as a unified community, especially by a real-estate developer or government organization.”11 A “real-estate developer” is “a person who invests in and develops the urban or suburban potentialities of real estate, especially by subdividing the land into home sites and then building houses and selling them.”12 Registrant’s identified real estate development services, thus, must be viewed as the design and construction of commercial and residential projects. Providing real estate advice is such a broad activity that it is encompassed by Registrant’s real estate development services. Unrestricted and broad identifications are presumed to encompass all services of the type described. See In re Jump Designs, 80 USPQ2d 1370, 1374 (TTAB 2006). In this regard, we note the excerpts from real estate development company websites that include rendering real estate advice. See 9 Dictionary.com based on the Random House Dictionary (2016). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed format. In re Cordua Rests. LP, 110 USPQ2d 1227, 1229 n.4 (TTAB 2014), aff’d ___ F.3d ___, ___USPQ2d ___ (Fed. Cir. 2016); Threshold.TV Inc. v. Metronome Enters. Inc., 96 USPQ2d 1031, 1038 n.14 (TTAB 2010). 10 Id. “Consulting” is defined as “to seek advice or information from; ask guidance from: Consult your lawyer before signing the contract.” Id. 11 Dictionary.com based on the Random House Dictionary (2016). 12 Id. Serial No. 86346318 Serial No. 86346689 - 11 - the EYA website (eya.com), a real estate developer, discussing the efforts involved in creating the Old Town Commons project in Alexandria, Virginia. The redevelopment model for the preservation of public housing and public-private partnerships, EYA, ARHA and the City of Alexandria worked closely together to work through a host of complicated development decisions and designs. Today, Old Town Commons is smart, green, livable and worthy of emulation, thanks to the dedication of countless consultants, employees and partners.13 See also the PN Hoffman website (pnhoffman.com) touting that company’s “careful planning and neighborhood outreach [to] ensure that our finished products revitalize the landscape and add new life to communities”14 and the Bozzuto website (bozzuto.com) advertising “the process of delivering and selling lots, complete infrastructure, oversee compliance of architectural regulations, and all other facets of developing your community” “from land planning through construction.”15 Condominium sales management services are the directing, handling, or controlling of a condominium association’s sales operations. Those services would also encompass providing real estate consultancy. Applicant argues that Registrant’s services and Applicant’s services are different because Registrant manages a single luxury condominium complex in Dallas, Texas, while Applicant represents buyers and sellers in the sale of homes in Chandler, Arizona and the greater Phoenix, Arizona metropolitan area.16 With respect to the 13 November 5, 2014 Office Action. 14 Id. 15 Id. 16 4 TTABVUE 5-6. Serial No. 86346318 Serial No. 86346689 - 12 - differences in the services rendered by Applicant and Registrant, the issue is not whether consumers can differentiate the services themselves, but whether consumers may confuse the source of the services. In re Box Solutions Corp., 79 USPQ2d 1953, 1956 (TTAB 2006). With respect to Applicant’s argument that Applicant and Registrant render their services in disparate geographic trading areas, Applicant is seeking geographically unrestricted registrations and Registrant’s registration is also geographically unrestricted. Thus, we are constrained to evaluate the issue of likelihood of confusion in terms of potentially nationwide markets (i.e., we must assume that Applicant and Registrant may render their services in the same geographic area). Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983); In re Integrity Mutual Insurance Company, Inc., 216 USPQ 895, 896 (TTAB 1982). In view of the foregoing, we find that the services are related. C. Established, likely-to-continue channels of trade. As discussed above, Applicant’s identifications of “real estate consultancy” and “real estate consultation” services are so broad that they are encompassed by Registrant’s “real estate development services” and “condominium sales management” services and, therefore, Applicant’s services are related to Registrant’s services. When, as in the applications and registrations at issue, the services are broadly described and there is no limitation as to the nature, type, channels of trade or class of purchasers, we must presume that the applications and registrations encompass all services of the type described, that they move in all channels of trade Serial No. 86346318 Serial No. 86346689 - 13 - normal for these services, and that they are available to all classes of purchasers for the described services. See In re Box Solutions Corp., 79 USPQ2d at 1956; In re Linkvest S.A., 24 USPQ2d 1716 (TTAB 1992). Accordingly, the channels of trade are presumed to be the same. D. The conditions under which and buyers to whom sales are made, i.e., ‘impulse’ vs. careful, sophisticated purchasing. Applicant argues, with respect to the care taken in choosing Applicant’s services, that “[p]eople looking to buy a home or a condominium are more likely to take their time and make an educated decision before entering into these purchases because of the important impact these decisions can have on their lives and for most people, buying a home or a condo may be one of the biggest investments of their lives.”17 While that may be true, it does not address the decision-making process that goes along with real estate consultancy, consultation, real estate development, and condominium sales management services. Nevertheless, we may assume that consumers engaging real estate developers and condominium sales managers exercise a relatively high degree of consumer care in making their purchasing decisions. Accordingly, we find that this du Pont factor weighs against finding a likelihood of confusion. E. The nature and extent of any actual confusion and the length of time during which there has been concurrent use without evidence of actual confusion. 17 4 TTABVUE 6. Serial No. 86346318 Serial No. 86346689 - 14 - Applicant asserts that it “has utilized its mark since July 2014 without any complaint from [Registrant] or any consumer claiming that they were confused by [Applicant’s] use of its mark.”18 The alleged contemporaneous use of Applicant’s and Registrant’s marks for a period of two years without actual confusion is entitled to little weight, especially in an ex parte context. See In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003) (“uncorroborated statements of no known instances of actual confusion are of little evidentiary value”). See also In re Bisset-Berman Corp., 476 F.2d 640, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of applicant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion); J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 144 USPQ 435, 438 (CCPA 1965). Moreover, the absence of any reported instances of confusion is meaningful only if the record indicates appreciable and continuous use by Applicant of its marks for a significant period of time in the same markets as those served by Registrant under its marks. Citigroup Inc. v. Capital City Bank Group, Inc., 94 USPQ2d 1645, 1660 (TTAB 2010), aff’d, 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir. 2011); Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). In other words, for the absence of actual confusion to be probative, there must have been a reasonable opportunity for confusion to have occurred. Barbara’s Bakery Inc. v. Landesman, 82 USPQ2d 1283, 1287 (TTAB 2007) (the probative value of the absence of actual 18 4 TTABVUE 7. Serial No. 86346318 Serial No. 86346689 - 15 - confusion depends upon there being a significant opportunity for actual confusion to have occurred); Red Carpet Corp. v. Johnstown American Enterprises Inc., 7 USPQ2d 1404, 1406-1407 (TTAB 1988); Central Soya Co., Inc. v. North American Plant Breeders, 212 USPQ 37, 48 (TTAB 1981) (“the absence of actual confusion over a reasonable period of time might well suggest that the likelihood of confusion is only a remote possibility with little probability of occurring”). In this case, two years of contemporaneous use of the marks in different geographic trading areas does not make for a reasonable opportunity for confusion to have occurred. Accordingly, the du Pont factor of the length of time during and conditions under which there has been contemporaneous use without evidence of actual confusion is considered neutral. F. Balancing the factors. Because the marks are similar, the services are related, and the services are presumed to move in the same channels of trade, we find that Applicant’s marks MT and design for “commercial and residential real estate agency services; real estate agencies; real estate brokerage; real estate consultancy; real estate consultation; real estate procurement for others; residential real estate agency services” are likely to cause confusion with the registered marks MT and MT and design for “real estate development” and “real estate services, namely, condominium sales management.” Although the care that consumers are likely to exercise in the purchase of such services weighs in Applicant’s favor, it is outweighed by the similarity of the marks and the relatedness of the services. Serial No. 86346318 Serial No. 86346689 - 16 - Decision: The refusals to register both of Applicant’s MT and design marks are affirmed.