Ownit Mortgage Solutions, Inc.

Trademark Trial and Appeal Board

Aug 17, 2006

No. 78342465 (T.T.A.B. Aug. 17, 2006)

Mailed:
August 17, 2006
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Ownit Mortgage Solutions, Inc.1

________

Serial No. 78342465
_______

Darren S. Rimer of Rimer & Mathewson LLP for Ownit Mortgage
Solutions, Inc.

Steven Foster, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Walsh and Cataldo, Administrative Trademark
Judges.

Opinion by Walsh, Administrative Trademark Judge:

On December 17, 2003, Ownit Mortgage Solutions, Inc.
(applicant), through its predecessor, filed an application
to register the mark RightLoan in standard-character form
on the Principal Register for services identified as
“mortgage banking” in International Class 36. Applicant

1 William Dallas filed the application and assigned it to Ownit
Mortgage Solutions, Inc. in a document recorded at Reel
3153/Frame 0410.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78342465
2
alleges first use of the mark anywhere on November 1, 2003
and first use of the mark in commerce on December 10, 2003.
The examining attorney has refused registration under
Trademark Act Section 2(d), 15 U.S.C. § 1052(d), in view of
two prior registrations:
Reg. No. 1801254, owned by Residential Loan Centers of
America, Inc. (“RLCAI”), for the mark THE RIGHT LOAN,
ALWAYS in standard-character form for services
identified as “providing mortgage loan brokerage
services and loans” in International Class 36. The
registration issued on December 30, 2003; the
registration claims both first use anywhere and first
use of the mark in commerce on March 24, 2003; and

Reg. No. 2869838, owned by Mortgage Shoppers Network,
Inc. (“MSNI”), for the mark THE RIGHT LOAN @ THE RIGHT
PRICE in standard-character form for services
identified as “real estate 1st and 2nd trust deed, home
equity loan, and debt consolidation loan brokering” in
International Class 36. The registration issued
August 3, 2004; the registration claims both first use
anywhere and first use of the mark in commerce on May
1, 2001.

Applicant has appealed. Applicant and the examining
attorney have filed briefs. Applicant did not request an
oral hearing. We affirm the refusal as to both cited
registrations.
LIKELIHOOD OF CONFUSION
Section 2(d) of the Act precludes registration of an
applicant’s mark “which so resembles a mark registered in
the Patent and Trademark Office … as to be likely, when
used on or in connection with the goods of the applicant,
Ser No. 78342465
3
to cause confusion …” 15 U.S.C. § 1052(d). To determine
whether there is a likelihood of confusion, we must
consider all evidence of record bearing on the factors
delineated in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977). Here, as is
often the case, the crucial factors are the similarity of
the marks and the similarity of the services of the
applicant and registrant. Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976). In addition to those factors, we will also address
applicant’s and the examining attorney’s arguments relating
to other factors, and applicant’s argument that factors
other than the marks and the services are of particular
importance in this case.
We will consider the refusal with regard to each of
the cited registrations separately. However, before we do
so, we will address issues with applicant’s evidence common
to both registrations.
Applicant’s Evidence
In the case of both registrations, applicant has
provided evidence from websites allegedly related to each
of the owners of the cited registrations. Based on this
evidence applicant makes numerous arguments. For example,
applicant argues that both registrants use their respective
Ser No. 78342465
4
company names or “house marks” along with the registered
mark, and that the presence of the house marks would avoid
confusion. Applicant also argues that the manner of
display of the cited registered marks and other uses of the
words “right loan” on those websites would avoid confusion
with its mark.
Both cited registrations display the marks in
standard-character form, and as such, we must consider that
each of the marks could be used in any manner of display
within reason. The cited registrations are “prima facie
evidence of the validity of the registered mark, of the
registrant’s ownership of the mark, and of the registrant’s
exclusive right to use the registered mark in commerce on
or in connection with the goods or services specified in
the certificate, subject to any conditions or limitations
stated in the certificate.” See Trademark Act Section
7(b), 15 U.S.C. § 1057(b).
To the extent applicant attempts to use extrinsic
evidence to show how each registrant uses its registered
mark, we have not considered it for that purpose. Vornado,
Inc. v. Breuer Electric Mfg. Co., 390 F.2d 724, 156 USPQ
340, 342 (CCPA 1968)(“… the display of a mark in a
particular style is of no material significance since the
display may be changed at any time as may be dictated by
Ser No. 78342465
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the fancy of the applicant or the owner of the mark.”).
More specifically, we may not and have not considered
applicant’s evidence purporting to show that the
registrants actually use the registered marks in a
particular manner of display, nor have we considered
applicant’s evidence purporting to show that the
registrants actually use their registered marks with their
company names, house marks or similar subject matter.
Furthermore, in its brief applicant has both cited and
discussed numerous cases which originated in the district
courts. These cases involve infringement and similar
claims where the focus is on the actual use of marks.
These cases are of limited relevance here due to our focus
in this proceeding on the particulars of the application
and registrations, not actual use. In re Bercut-
Vandervoort & Co., 229 USPQ 763, 765 (TTAB 1986)(“… that
[cited] case is clearly distinguishable from the present
one since that case involved a trademark infringement
action, rather than a proceeding to determine whether an
applicant is entitled to federal registration of the mark
as shown in the application and as used on the goods
described in the application.”).
Ser No. 78342465
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Reg. No. 1801254 - THE RIGHT LOAN, ALWAYS
Comparison of the Services
Applicant identifies its services as “mortgage
banking.” The services in Reg. No. 1801254 for the THE
RIGHT LOAN, ALWAYS mark are identified as “providing
mortgage loan brokerage services and loans.”
To find goods or services related for the purposes of
Trademark Act Section 2(d), the goods or services need not
be identical. The goods or services need only be related
in such a way that the circumstances surrounding their
marketing would result in relevant consumers mistakenly
believing that the services originate from the same source.
On-Line Careline Inc. v. America Online Inc., 229 F.3d
1080, 56 USPQ2d 1471 (Fed. Cir. 2000).
In this case the examining attorney has argued that
applicant’s “mortgage banking” services are broad enough to
include the registrant’s services of “providing mortgage
loan brokerage services and loans.” The examining attorney
has provided dictionary definitions to support this
position. Even without the help of those definitions we
would assume that “mortgage banking” services include at
least “loans.” Furthermore, applicant has not argued that
the services in the application and registration differ.
Ser No. 78342465
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Accordingly, we conclude that the services of applicant and
registrant are overlapping and otherwise related.
Furthermore, we note that, “the degree of similarity
[between the marks] necessary to support the conclusion of
likely confusion declines” when the goods or services are
identical. Century 21 Real Estate Corp. v. Century Life of
America, 970 F.2d 874, 23 USPQ2d 1698, 1701 (Fed. Cir.
1992), cert. denied, 506 U.S. 1034 (1992).
Comparison of the Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
both marks. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1692 (Fed. Cir. 2005).
In comparing the marks we must look to the marks as
they appear in the application and registration. See
Vornado, Inc. v. Breuer Electric Mfg. Co., 156 USPQ at 342.
The words “RIGHT LOAN” comprise applicant’s entire
mark, RightLoan, and the most prominent element in the
registered mark, THE RIGHT LOAN, ALWAYS. Consequently,
RIGHT LOAN is the dominant element in both marks. The
article “THE” does nothing to differentiate the marks, nor
does applicant’s presentation of the words RightLoan
without a space. The presence of the final word “ALWAYS”
Ser No. 78342465
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differentiates the sound and appearance of the marks
somewhat, but it reinforces the connotation and commercial
impression which both marks share. That is, both marks
suggest that applicant and registrant offer many options
for its customers and applicant and registrant will provide
a service which fits the needs of each individual customer.
The strong similarity in connotation and commercial
impression overrides any minor differences between
RightLoan and THE RIGHT LOAN, ALWAYS in appearance and
sound.
In concluding that RIGHT LOAN is the dominant element
in both marks, we are mindful of the necessity to view the
marks overall, as applicant urges, and we have done so.
However, it is also true that greater weight may be given
to one feature in that overall assessment. As the Court of
Appeals for the Federal Circuit observed, “… in
articulating reasons for reaching a conclusion on the issue
of confusion, there 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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Ser No. 78342465
9
Accordingly, we conclude that the marks, RightLoan and
THE RIGHT LOAN, ALWAYS, are similar.
Reg. No. 2869838 - THE RIGHT LOAN @ THE RIGHT PRICE
Comparison of the Services
Again, applicant identifies its services as “mortgage
banking.” The services in Reg. No. 2869838 for the THE
RIGHT LOAN @ THE RIGHT PRICE mark are identified as “real
estate 1st and 2nd trust deed, home equity loan, and debt
consolidation loan brokering.”
To find goods or services related for the purposes of
Trademark Act Section 2(d), the goods or services need not
be identical. The goods or services need only be related
in such a way that the circumstances surrounding their
marketing would result in relevant consumers mistakenly
believing that the services originate from the same source.
On-Line Careline Inc. v. America Online Inc., 56 USPQ2d at
1471.
In this case also the examining attorney has argued
that applicant’s “mortgage banking” services are broad
enough to include the registrant’s services, “real estate
1st and 2nd trust deed, home equity loan, and debt
consolidation loan brokering” based on dictionary
definitions. Here too, without any help from those
definitions, we would assume that “mortgage banking” is
Ser No. 78342465
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closely related to “real estate 1st and 2nd trust deed, home
equity loan, and debt consolidation loan brokering.”
Again, applicant has not argued that the services in the
application and registration differ. Accordingly, we
conclude that the services of applicant and registrant are
closely related.
Comparison of the Marks
Here too, in comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
both marks. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d 1689 at 1692.
In comparing the marks we must look to the marks as
they appear in the application and registration. See
Vornado, Inc. v. Breuer Electric Mfg. Co., 156 USPQ at 342.
Again, the words “RIGHT LOAN” comprise applicant’s
entire mark, RightLoan, and the most prominent, element in
the registered mark, THE RIGHT LOAN @ THE RIGHT PRICE. In
this case it is of particular importance that the phrases
“RightLoan” and “THE RIGHT LOAN,” which are for all intents
and purposes identical, each come first in the respective
marks. Presto Products, Inc. v. Nice-Pak Products Inc., 9
USPQ2d 1895, 1897 (TTAB 1988)(“… [it is] a matter of some
importance since it is often the first part of a mark which
is most likely to be impressed upon the mind of a purchaser
Ser No. 78342465
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and remembered.”). Consequently, RIGHT LOAN is the
dominant element in both marks. Again, the article “THE”
does nothing to differentiate the marks, nor does
applicant’s presentation of the words RightLoan without a
space.
The presence of the final phrase “… @ THE RIGHT PRICE”
differentiates the sound and appearance of the marks, but
it enhances, but does not alter, the connotation and
commercial impression which both marks share. That is,
both marks suggest that applicant and registrant offer many
options for customers and that they will provide a service
which fits the needs of each individual customer. The
phrase “@ THE RIGHT PRICE” adds the suggestion that the
service is economical, a suggestion which is part and
parcel of the suggestion that the services will fit the
needs of the individual. Here too, the strong similarity
in connotation and commercial impression overrides the
differences between RightLoan and THE RIGHT LOAN @ THE
RIGHT PRICE marks in appearance and sound. The differences
in sound and appearance in this case are more significant
than the difference noted with regard to the THE RIGHT
LOAN, ALWAYS mark, but still not sufficient to override the
similarity in connotation and commercial impression between
applicant’s mark and the registered mark.
Ser No. 78342465
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Here too, in concluding that RIGHT LOAN is the
dominant element in both marks, we again are mindful of the
necessity to view the marks overall, as applicant urges,
and we have done so. Here too, greater weight may be given
to one feature in that overall assessment. As we noted
above, “… in articulating reasons for reaching a conclusion
on the issue of confusion, there 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 consideration of the marks in
their entireties. Indeed, this type of analysis appears to
be unavoidable.” In re National Data Corp., 224 USPQ at
751.
Accordingly, we conclude that the marks, RightLoan and
THE RIGHT LOAN @ THE RIGHT PRICE, are similar.
In concluding that “RightLoan” is similar to both
cited marks, we note that applicant seeks to register
“RightLoan” alone, while each of the cited marks include
additional elements which arguably distinguish them from
one another. Furthermore, and more importantly, here we
must judge the registrability of applicant’s mark and not
judge actions taken in previous applications. In re Nett
Designs, Inc., 236 F.3d 1339, 57 USPQ2d 1564, 1566 (Fed.
Cir. 2001).
Ser No. 78342465
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Other Factors Related to Both Cited Registrations
Applicant states, “Although there are some
similarities in these marks, an examination of many other
relevant factors, in the aggregate, prevent any likelihood
of confusion between Appellant’s mark and the cited marks.”
Here, we will discuss the “other” du Pont factors applicant
references. For the most part applicant does not
distinguish between the two cited registrations in this
regard. Accordingly, this discussion applies to both cited
registrations unless we indicate otherwise.
Du Pont Factor (6) - The number and nature of similar
marks in use on similar goods. Applicant makes a number of
arguments which relate to this du Pont factor and more
broadly to the “strength” or “weakness” of the marks at
issue here.
First, applicant argues that the individual words
“right” and “loan” are descriptive of loan services based
on definitions of each word and that consequently this
“necessarily limits the scope of protection which can be
accorded to any of the cited registrations.”
Applicant also argues that the existence of multiple
registrations for similar services for marks which include
“RIGHT LOAN” indicates that consumers are able to
distinguish among the marks in this “crowded field.” The
Ser No. 78342465
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registrations applicant relies upon for this purpose
consist of the two cited registrations and another
registration for the mark DO YOU HAVE THE RIGHT LOAN, also
owned by RLCAI, (Reg. No. 2801253) for “providing mortgage
bank brokerage services and loans.”
Applicant also provided voluminous Internet evidence
consisting of results pages from the Google® search engine,
and numerous examples of web pages from those results.
Applicant indicates that one Google® search for “the right
loan” produced 437,000 results, and another for “right
loan” produced 460,000 results. Applicant provided a
limited number of the results pages.2 Applicant also
provided “a representative sample of web pages resulting
from the first one hundred hits” from its search for “the
right loan.” Applicant also indicates that in a similar
search for “right loan” and “right price” it found 6,700
results and applicant provided “a sampling of the top 100
hits for these search terms.”

2 The appearance of terms in abbreviated listings of results from
search engines is of limited probative value. In re Fitch IBCA,
Inc., 64 UDPQ2d 1058, 1060 (TTAB 2002). Likewise, the mere
statement of the number of hits from a particular search is of
limited value.

Ser No. 78342465
15
In sum we find applicant’s evidence of the weakness of
“RIGHT LOAN” as applied to mortgage banking or related
fields unpersuasive.
At different points in its brief applicant asserts
that the individual words and the combination “RIGHT LOAN”
are either descriptive or suggestive. First, the
definitions of the individual words “right” and “loan,” by
themselves, are not at all probative of the strength of
“RIGHT LOAN” as a mark or component of a mark. In
considering the strength or weakness of the marks at issue,
the proper focus is the “RIGHT LOAN” combination, more
particularly, the use of “RIGHT LOAN” as a mark (or as part
of a mark) for mortgage banking and related services. In
re E. I. du Pont de Nemours & Co., 177 USPQ 563 at 567.
Also, we find applicant’s argument that “RIGHT LOAN”
is descriptive particularly unpersuasive. For example,
applicant argues that the use of “RIGHT LOAN” in the
registered mark DO YOU HAVE THE RIGHT LOAN, also owned by
RLCIA, somehow indicates registrant’s own descriptive use
of “RIGHT LOAN.” We reject applicant’s argument, based on
this or any other evidence of record, that “RIGHT LOAN” is
merely descriptive. As the examining attorney points out,
this argument even contradicts applicant’s own claim that
Ser No. 78342465
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it is entitled to register its own mark which consists of
“RightLaon” alone.
With regard to the registrations, applicant identifies
only three. The examining attorney has cited two of those,
and RLCAI, which owns one of the cited registrations, also
owns the third “RIGHT LOAN” registration. This is hardly
sufficient to establish that “RIGHT LOAN” is weak.
Also, the Court of Appeals for the Federal Circuit
recently has urged caution in relying on third-party
registrations for this purpose noting that registration
alone does not establish that a term is weak and that the
probative value of third-party trademarks depends entirely
upon their usage. Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1693. In
this case, even if we give applicant the benefit of the
doubt and assume that the marks in the third-party
registrations are in use, we find the evidence insufficient
to establish that “RIGHT LOAN” is weak in the mortgage
banking or related fields. Cf. Pizza Inn Inc. v. Russo,
221 USPQ 281, 282 (TTAB 1983).
Next, with regard to the Internet evidence, in spite
of the huge volume of evidence, we find no evidence of the
use of “RIGHT LOAN” as a mark or as a component of a mark,
other than uses by the two cited registrants. Applicant
Ser No. 78342465
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does point to frequent uses of “right loan” in text or even
in headings on various web pages. Applicant summarizes
its Internet evidence as to “right loan” as follows:
… it is very common for mortgage companies to speak of
“Choosing the Right Loan” (note the capital letters,
which do not connote trademark significance), “find
the right loan”, “How to Choose the Right Loan for All
Your Needs”, “How to Choose the Right Loan”, “how to
find the right loan”, ”The Right Loan for You”, “Our
charter is to get you the right loan”, ”The Right Loan
for You”, “getting the right loan”, “What is the right
loan for you”, and the like. Because the term is
often displayed as a heading, as in “The Right Loan
For You”, many companies use this term in a purely
descriptive sense to describe their services of
offering mortgage loans. Such term is not being used
by such parties in a trademark sense, and the same is
true for the cited registrations…

After considering all of the Internet evidence
applicant provided, including similar evidence with regard
to uses of “right loan” with “right price,” we conclude
that it fails to establish that “RIGHT LOAN” is weak.
While the words “right loan” or “right price” may be used
by others in relation to their mortgage loan services as an
integral part of text or headings in promoting the
services, the uses are neither descriptive uses nor
service-mark uses. Nor does this evidence establish that
either “right loan” or “right price” have a commonly
understood descriptive meaning in the mortgage banking or
related fields.
Ser No. 78342465
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Furthermore, we again reject applicant’s argument that
the cited marks themselves are merely descriptive. As we
indicated, we must presume that the cited marks are valid
in accordance with Trademark Act Section 7(b), as we
indicated above.3
Accordingly, on this record we are not persuaded that
the registered marks are weak, and therefore, only entitled
to a limited scope of protection, as applicant argues.
Du Pont Factor (4) - The conditioners under which and
the buyers to whom sales are made, i.e., “impulse” vs.
careful, sophisticated purchasing. Applicant argues that
because purchasers “will be spending more than one thousand
dollars on their mortgage” (or more) confusion is not
likely. While customers for mortgage loans may not act on
impulse, we cannot conclude that such purchasers are
sophisticated. Such purchasers could include a wide
spectrum of the public. Furthermore, even sophisticated
purchasers are not immune from trademark confusion. In re
Pellerin Milnor Corp., 221 USPQ 558, 560 (TTAB 1983).
Accordingly, we conclude that the sophistication of the
potential purchasers will not avoid confusion in this case.

3 Also, as we indicated above, we cannot and have not considered
applicant’s arguments based on extrinsic evidence that the
registrants have purportedly misused their marks in a descriptive
sense.

Ser No. 78342465
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Du Pont Factor (5) – Fame. Applicant also argues that
the marks in the cited registrations are not famous. In
fact, there is no evidence that the marks in the cited
registrations are famous. However, the absence of fame in
no way supports applicant’s case. In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed.
Cir. 2003)(“… we decline to establish that the converse
rule that likelihood of confusion is precluded by a
registered mark’s not being famous.”). The fame factor
does not enter into our determination in this case.
Du Pont Factor (8) – Actual Confusion. Applicant also
argues that the absence of actual confusion indicates no
likelihood of confusion. There is no evidence that there
has been an opportunity for confusion to occur in this case
as to either registrant. Furthermore, particularly in an
ex parte proceeding, “uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value.” In re Majestic Distilling Co., 65 USPQ2d at 1205.
See also In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27
(TTAB 1984). Therefore, we find applicant’s argument
regarding actual confusion unpersuasive.
Applicant also argues, apparently on the basis of du
Pont factors 11, 12 and 13, that we must consider the marks
as consumers will encounter them in the marketplace and
Ser No. 78342465
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that, when so considered, we must conclude that any
confusion will be de minimis. In so arguing applicant
relies heavily on the materials allegedly from the web
sites of both registrants. As we indicated above, we
cannot and have not considered this extrinsic evidence for
the purpose of evaluating the actual use of the cited marks
by the registrants. Therefore, we find applicant’s
arguments with regard to du Pont factors 11, 12 and 13
unpersuasive.
Accordingly, we find applicant’s arguments with regard
to the “other” du Pont factors, that is, those related to
factors other than the marks and the services of the
applicant and registrants, unpersuasive either considered
alone or in the aggregate.
CONCLUSION
In sum, after considering all evidence of record
bearing on the du Pont factors, we conclude that there is a
likelihood of confusion in this case with regard to both
cited registrations. We conclude so principally due to the
similarity between applicant’s mark and the marks in both
cited registrations and the close relationship between
applicant’s services and the services identified in both
cited registrations.
Ser No. 78342465
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Decision: The refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed with regard to
both Reg. Nos. 1801254 and 2869838.