Oxford Realty, LLCDownload PDFTrademark Trial and Appeal BoardDec 29, 202088388249 (T.T.A.B. Dec. 29, 2020) Copy Citation This Opinion is Not a Precedent of the TTAB Mailed: December 29, 2020 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Oxford Realty, LLC _____ Serial Nos. 88388223 and 88388249 _____ Kevin A. Mason of Vogel Law Firm, for Oxford Realty LLC. Michelle Ribaudo, Trademark Examining Attorney, Law Office 126, Andrew Lawrence, Managing Attorney. _____ Before Zervas, Kuhlke and Coggins, Administrative Trademark Judges. Opinion by Kuhlke, Administrative Trademark Judge: Oxford Realty, LLC (“Applicant”) seeks registration on the Principal Register for the marks (with REALTY disclaimed), and OXFORD REALTY in standard characters (with REALTY disclaimed), both for “Real estate brokerage; Real Serial Nos. 88388223 and 88388249 - 2 - estate listing; Real estate management services; Lease of real estate; Rental of real estate,” in International Class 36.1 The Trademark Examining Attorney has refused registration of Applicant’s marks under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s marks, when used in connection with the identified services, so resemble the registered marks and OXFORD in standard characters both for “Commercial real estate management,” in International Class 35 and “Commercial real estate development,” in International Class 37, and owned by the same registrant, as to be likely to cause confusion, mistake or deception.2 When the Section 2(d) refusals were made final, Applicant appealed and briefs have been filed. These appeals present common questions of law and fact and the records are substantially similar. Therefore, in the interest of judicial economy, we consolidate the cases and decide them in this single opinion. See In re Tapco Int’l 1 Application Serial Nos. 88388223 and 88338249 were filed on April 16, 2019, based on allegations of first use and first use in commerce at least as early as June 1, 2006, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a). Application Serial No. 88388223 includes the following description of the mark and color claim: The mark consists of the word “Oxford” in black lettering with the word “Realty” in black lettering beneath the word “Oxford” starting under the letter “x” in the word “Oxford”. Above the word “Oxford” is a design of a roofline in red. The color(s) red and black is/are claimed as a feature of the mark. 2 Registration No. 3950174 for the composite mark, issued on April 26, 2011, Section 8 and 15, 15 U.S.C. §§ 1058, 1065, combined declaration accepted and acknowledged, renewed. This registration also includes the following description of the mark “The mark consists of the word ‘oxford’ with vertical lines of varying lengths between each letter.” Registration No. 5707206 for the standard character mark, issued on March 26, 2019. This registration also includes the following services: “Commercial real estate investment services,” in International Class 36. Serial Nos. 88388223 and 88388249 - 3 - Corp., 122 USPQ2d 1369, 1369 n.1 (TTAB 2017); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1214 (June 2020). We have considered all arguments and evidence filed in each case.3 We affirm the refusal to register in each application. I. Preliminary Evidentiary Matter In its brief, for the first time, Applicant included five internet hyperlinks to support its argument that consumers would not be confused as to source by pointing to examples of actual use in the marketplace. The evidence is both untimely and not properly made of record. As to untimeliness, the record in an application should be complete prior to filing the ex parte appeal. Trademark Rule 2.142(d), 37 C.F.R. § 2.142(d); see, e.g., In re ADCO Indus. – Techs., L.P., 2020 USPQ2d 53786, at *2 (TTAB 2020) (evidence submitted for the first time in supplemental trial brief not considered). As to the insufficiency of the submission, web addresses or hyperlinks are insufficient to make the underlying webpages of record.4 In re ADCO, 2020 3 Citations to TTABVUE throughout the decision are to the Board’s public online database that contains the appeal file, available on the USPTO website, www.USPTO.gov. The first number represents the docket number in the TTABVUE electronic case file and the second represents the page number(s). Citations to the examination record refer to the Trademark Office’s online Trademark Status and Document Retrieval system (TSDR). Citations are to the appeal file and record in Application Serial No. 88388223 unless otherwise noted. 4 Applicant also argues that the links are not “evidence.” It is correct that the links alone are not sufficient to put the websites into the record and in that sense they do not rise to the level of being evidence. In fact, they are wholly non-probative. Something other than legal argument cannot be “illustrative” or “supportive” without being evidence. Thus, it is unclear how categorizing them as not evidence is helpful to Applicant. While we have considered Applicant’s arguments, as discussed infra, pointing to actual use is of little value inasmuch Serial Nos. 88388223 and 88388249 - 4 - USPQ2d 53786, at *2; see also In re Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1195 n.21 (TTAB 2018) (Board does not consider websites for which only links are provided); In re Olin Corp., 124 USPQ2d 1327, 1332 n.15 (TTAB 2017) (“Because the information displayed at a link’s Internet address can be changed or deleted, merely providing a link to a website is insufficient to make information from that site of record.”); In re Change Wind Corp., 123 USPQ2d 1453, 1462 n.8 (TTAB 2017) (providing only a web address or hyperlink is insufficient to make such materials of record). Moreover, the Board does not take judicial notice of internet pages. In re Future Ads LLC, 103 USPQ2d 1571, 1572 n.3 (TTAB 2012) (Board did not take judicial notice of online dictionary definition because only the link to the website was provided). Cf. In re HSB Solomon Assocs. LLC, 102 USPQ2d 1269, 1274 (TTAB 2012) (Board will not utilize web address to access site and consider whatever content appears). In view thereof, the Examining Attorney’s objection to these links is sustained. In its reply brief, Applicant requests the Board remand the application for consideration of the additional evidence. A request for remand should be accompanied by the additional evidence and may be granted upon a showing of good cause. The length of the delay in making the request after the reason for the remand becomes known, or the point in the appeal process at which the request for remand is made, will be considered in the determination of whether good cause exists. Generally, the as we must consider all services encompassed by the identifications in the applications and registrations regardless of the scope of actual use. Serial Nos. 88388223 and 88388249 - 5 - later in the appeal proceeding that the request for remand is filed, the stronger the reason that must be given for good cause to be found. TBMP § 1207.02. Here, Applicant waited until its reply brief to make its request and did not attach the evidence. In addition, it is evidence that would have been previously available, and a new attorney has not taken over the case. See id. and cases cited therein. Finally, as noted and discussed infra, evidence of extrinsic use is not relevant in determining right to registration. The determination is based on the scope of the services identified in the applications and registrations. See, e.g., In re FCA US LLC, 126 USPQ2d 1214, 1217 (TTAB 2018), aff’d, 778 Fed. App’x. 962 (Fed. Cir. 2019); In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008); In re Bercut-Vandervoort & Co., 229 USPQ 763, 764–65 (TTAB 1986); see also In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1052 (Fed. Cir. 2018) (“The third DuPont factor—like the second factor—must be evaluated with an eye toward the channels specified in the application and registration, not those as they exist in the real world.”) In view of the above, Applicant’s request for remand embedded in its reply brief is denied.5 II. Likelihood of Confusion When the question is likelihood of confusion, we analyze the facts as they relate to the relevant factors set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (DuPont). See also In re Majestic Distilling Co., 315 5 Applicant is advised it is the better practice to submit a request for remand as a separate filing. In re Ox Paperboard, LLC, 2020 USPQ2d 10878, at *2 (TTAB 2020). Serial Nos. 88388223 and 88388249 - 6 - F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019); see also M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within the DuPont list of factors, only factors that are “relevant and of record” need be considered). We confine our DuPont analysis in each application to the cited standard character mark OXFORD REALTY in Registration No. 5707206. If we find likelihood of confusion as to this mark and those services, we need not find it as to the composite word-and-design mark. Conversely, if we do not find a likelihood of confusion as to the cited standard character mark, we would not find it as to the composite mark. See In re I-Coat Co., 126 USPQ2d 1730, 1734 (TTAB 2018) (citing In re Max Cap. Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010)). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004); 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.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers all DuPont factors for which there is record evidence but ‘may focus . . . on dispositive factors, such as similarity of the Serial Nos. 88388223 and 88388249 - 7 - marks and relatedness of the goods.”’) (quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375, 1380 (Fed. Cir. 2002)). A. Relatedness of the Services, Trade Channels, Classes of Consumers When considering the services, trade channels, and classes of consumers, we must make our determinations based on the services as they are identified in the applications and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir. 2002); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). Applicant centers its argument on the differences between Applicant’s and Registrant’s actual uses, characterizing Applicant as a “small-town real estate broker” and Registrant as an “international developer and manager of large-scale high dollar glass-and steel high rise commercial urban luxury real estate projects.”6 4 TTABVUE 6-7. However, as noted above, in considering the right to registration we must compare Applicant’s services as they are identified in the application which do 6 Applicant also references Jacobs v. Int’l Multifoods Corp., 668 F.2d 1234, 212 USPQ 641 (CCPA 1982) to suggest that “something more” must be shown to show the services are complimentary or related. However, that case is limited to certain factual situations (e.g., restaurants v. food products) where the relationship “is not evident, well-known or generally recognized.” See In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1087 (Fed. Cir. 2014) (something more needed to show health care services related to printed materials); see also In re Country Oven, Inc., 2019 USPQ2d 443903 (TTAB 2019) (something more not needed to show retail bakery shops related to bread buns). Such facts are not present in this case. Serial Nos. 88388223 and 88388249 - 8 - not exclude commercial real estate services and are not limited to “brokerage” services but rather include listing, management, lease and rental of real estate services. Applicant’s more broadly worded “Real estate management services” include residential and commercial real estate from “small town” to “urban luxury,” which encompasses Registrant’s “Commercial real estate management services” and, as such, the services are legally identical. It is sufficient for a finding of likelihood of confusion if relatedness is established for any item encompassed by the identification of services within a particular class in an application. Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., 648 F.2d 1335, 209 USPQ 986 (CCPA 1981); Inter IKEA Sys. B.V. v. Akea, LLC, 110 USPQ2d 1734, 1745 (TTAB 2014). However, we further find, as demonstrated by the record, even if Applicant’s services as identified could be read to exclude commercial real estate services, the record shows that residential and commercial real estate services are commonly provided by the same source under the same mark. Moreover, Applicant’s other services, namely, “Real estate brokerage; Real estate listing; Lease of real estate; Rental of real estate,” are related to Registrant’s “Commercial real estate management services.” The Examining Attorney included several use-based, third- party registrations showing that the same entity has registered a single mark identifying at least one of Applicant’s services and one of Registrant’s services. Third- party registrations that cover services from both the cited registration and an applicant’s application are relevant to show that the services are of a type that may emanate from a single source under one mark. See, e.g., In re Detroit Athletic, 128 Serial Nos. 88388223 and 88388249 - 9 - USPQ2d at 1051; Hewlett-Packard v. Packard Press, 62 USPQ2d at 1004; In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988). A few examples are listed below:7 Registration No. 5509761 for the mark GREAT EARTH for, inter alia, real estate brokerage; real estate management services; real estate listing; real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space; commercial and residential real estate agency services; Registration No. 5484117 for the mark M MASSENGALE GROUP for, inter alia, real estate listing; real estate management services; real estate services, namely, rental, brokerage, leasing and management of commercial property, offices and office space; commercial and residential real estate agency services; Registration No. 5752128 for the mark AGENTZERO for, inter alia, real estate brokerage; real estate management services; rental, brokerage, leasing and management of commercial property; and Registration No. 5539086 for the mark S STRATWELL for, inter alia, real estate brokerage; real estate services, namely rental, brokerage, leasing and management of commercial property, offices and office space; commercial and residential real estate agency services. These registrations serve to demonstrate that the various real estate services are related. 7 January 17, 2020 Office Action, TSDR 2-17. See also id. at 18-88. Serial Nos. 88388223 and 88388249 - 10 - The Examining Attorney also provided examples of one entity using the same mark in connection with residential and commercial real estate services. A few examples are set forth below:8 ONE SOURCE Real Estate is a leading commercial and residential real estate brokerage firm. Our service offering includes a complete range of services to help you lease, sell, or find the perfect location. (onesourcecompanies.com); Market Experts In Commercial … Owner occupants and investors alike, turn to us for our full spectrum knowledge in selling, acquiring, and leasing property. … Dedicated Advocates in Residential … Selling your home, searching for your dream property, or looking for just the right rental? (roiproperties.com); CRRES Commercial & Residential Real Estate Solutions … Brokerage … Consulting … Development … While our focus is commercial real estate, we help people buy and sell homes in Kentucky and Tennessee, too. (crresbg.com); GRBD Group … Residential Brokerage … Commercial Brokerage … Property Management … (grbdgroup.com); and K&A Real Estate Services … Commercial & Residential … Marketing & Listing Properties for Sale … Buying and Selling Commercial Real Estate … Residential Real Estate … Buying or Selling a Home (kakenmasterproperties.com). This evidence shows that consumers are exposed to third-party use of the same mark for Applicant’s and Registrant’s services. Because the services are legally identical in part, and there are no limitations as to channels of trade or classes of purchasers in the applications, we presume that Applicant’s and Registrant’s services will be offered via the same channels of trade to 8 January 17, 2020 Office Action, TSDR 89-138. Serial Nos. 88388223 and 88388249 - 11 - the same classes of consumers for commercial real estate services. 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). In addition, as demonstrated by the third-party uses in the record, the channels of trade and consumers of various residential and commercial real estate services overlap. Thus, consumers are accustomed to seeing the same mark used for both residential and commercial real estate services, and commercial real estate consumers in their individual capacities would be exposed to residential real estate services. Finally, Applicant’s arguments that limit the geographic scope of its services are similarly unpersuasive in this analysis because Applicant seeks nationwide protection. Geographic limitations are only considered in the context of an application for concurrent use. Jansen Enters. Inc. v. Rind, 85 USPQ2d 1104, 1106 n.3 (TTAB 2007) (Board only considers geographic limitations within context of a concurrent use proceeding). We find Applicant’s and Registrant’s services to be legally identical in part and otherwise closely related, and the trade channels and classes of consumers overlap. This strongly favors a finding of likelihood of confusion. B. Conditions of Sale As to the sophistication of the overlapping consumer base, the record does not include evidence to support a finding on the level of sophistication or the actual process of finding and engaging a real estate company. However, real estate Serial Nos. 88388223 and 88388249 - 12 - transactions generally, and more specifically, commercial real estate transactions, would entail careful purchasing and we find this factor weighs somewhat in Applicant’s favor, but not sufficiently to outweigh the other factors given the near identical nature of the marks (discussed infra) and the in-part legally identical and otherwise closely related services. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (“even sophisticated purchasers can be confused by very similar marks”); Top Tobacco, LP v. N. Atl. Operating Co., 101 USPQ2d 1163, 1170 (TTAB 2011). C. Similarity/Dissimilarity of the Marks We compare the marks 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 DuPont, 177 USPQ at 567). “Similarity in any one of these elements may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126 USPQ2d 1742, 1746 (TTAB 2018) aff’d 777 Fed. App’x. 516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). “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). In evaluating the similarities between marks, the emphasis must be on the recollection of the average purchaser, who normally retains a general, rather than specific, Serial Nos. 88388223 and 88388249 - 13 - impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960 (TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)). Our analysis cannot be predicated on dissecting the marks into their various components; that is, the decision must be based on a comparison of the entire marks, not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212 USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected and considered piecemeal; rather, it must be considered as a whole in determining likelihood of confusion.”). However, “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.” In re Nat’l Data, 224 USPQ at 751. Finally, when the services are legally identical, the degree of similarity between the marks necessary to support a determination that confusion is likely declines. See Bridgestone Ams. Tire Operations, LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir. 2012); In re Viterra, 101 USPQ2d at 1908. We begin with a comparison of Applicant’s standard character mark OXFORD REALTY in Application Serial No. 88388249 to Registrant’s standard character mark OXFORD in Registration No. 5707206. Applicant’s mark incorporates the entirety of Registrant’s mark and they are similar in appearance, sound, connotation and Serial Nos. 88388223 and 88388249 - 14 - commercial impression because they both include, and in the case of Applicant’s mark begin with, the word OXFORD. Applicant argues the addition of the word REALTY “creates a commercial impression very different from the bare ‘OXFORD’ word element constituting each of the Prior Marks” because it “is an especially concrete element in the Proposed Marks” and “provides additional significance … which is ultimately tied to the real estate brokerage services covered by the Proposed Marks.” 4 TTABVUE 8. While that may be true, it is a commercial impression that tells the consumer the services are realty services which does not distinguish it from Registrant’s services which are also realty services. Applicant further suggests that when used with the word REALTY the word OXFORD evokes “an atmosphere of old money, tradition and learning” and putting these words together “create[s] a connotation that is obvious to the purchaser – these services have been around for a long time, carried on among intelligent, educated people, and are therefore reliable.” Id. at 8-9. We are not persuaded by Applicant’s speculation as to the impact of the word REALTY on the word OXFORD. The Examining Attorney provided the following dictionary definition of REALTY as “real estate.”9 Clearly, the word REALTY is merely descriptive of Applicant’s real estate services, as acknowledged by Applicant. 4 TTABVUE 8. Thus, the addition of the word REALTY does not alter the meaning or commercial impression of the word 9 June 28, 2019 Office Action, TSDR at 8 (MERRIAM-WEBSTER at www.merriam- webster.com). Serial Nos. 88388223 and 88388249 - 15 - OXFORD in a way that would distinguish Applicant’s mark from Registrant’s OXFORD mark used in connection with realty services. One feature of a mark may be more significant or dominant in creating a commercial impression. See In re Viterra, 101 USPQ2d at 1908 (Fed. Cir. 2012); In re Nat’l Data, 224 USPQ at 751; TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1207.01(b)(viii), (c)(ii) (Oct. 2018). Disclaimed matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or less dominant when comparing marks. In re Detroit Athletic, 128 USPQ2d at 1050 (citing In re Dixie Rests., 41 USPQ2d at 1533-34; TMEP § 1207.01(b)(viii), (c)(ii). Here, the word common to Applicant’s and Registrant’s marks, OXFORD, is the dominant element in Applicant’s mark. Moreover, the dominant element is the first word in Applicant’s mark and consumers are generally more inclined to focus on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1692 (finding similarity between VEUVE ROYALE and two VEUVE CLICQUOT marks in part because “VEUVE . . . remains a ‘prominent feature’ as the first word in the mark and the first word to appear on the label”); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (finding similarity between CENTURY 21 and CENTURY LIFE OF AMERICA in part because “consumers must first notice th[e] identical lead word”); see also In re Detroit Athletic, 128 USPQ2d at 1049 (finding “the identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”). Serial Nos. 88388223 and 88388249 - 16 - Overall, we find the marks to be highly similar. Turning to Applicant’s composite mark, Applicant points to the design elements in its mark along with the disclaimed word REALTY and concludes these differences are sufficient to distinguish the marks. Specifically, as to the design element, Applicant asserts that “the roof gives an impression of shelter, of comfort, and of home – a roof over the Applicant’s clients’ heads” and this “impression is only strengthened, as the stylized roof is the only colored element in the Proposed Design Mark, and that element is colored red for extra emphasis.” 4 TTABVUE 9. Applicant concludes that its design mark communicates that the services “are welcoming and homey in nature and design, with the red roof element the most striking and contrasting part of that design.” Id. By contrast Applicant asserts that Registrant’s mark “gives its customers no further clue as to the intent and function of the services covered.” Id. First, the scope of the services as identified may not be limited by the mark. Second, commercial real estate includes residential buildings which are also homes. We find in the composite mark the word OXFORD is visually the most prominent element of the mark. Moreover, in a composite mark, the words are generally given greater weight because they would be used by consumers to refer to the services. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999); see also Anthony’s Pizza & Pasta Int’l, Inc. v. Anthony’s Pizza Holding Co., Inc., 95 USPQ2d 1271, 1279 (TTAB 2009) aff’d, 415 Fed. App’x. 222 (Fed. Cir. 2010). In addition, the word Serial Nos. 88388223 and 88388249 - 17 - OXFORD is the dominant literal element. As discussed above, the additional word REALTY is highly descriptive or generic of the services. The prominent placement of OXFORD in Applicant’s mark creates a strong similarity that is not diminished by the additional word REALTY or the design elements, which serve to underscore the similar meaning and commercial impression of the real estate services. When calling for the real estate services potential consumers will reach for the word OXFORD, not the other word descriptive of the services or the design suggestive of real estate services. In addition, because the rights associated with a standard character mark reside in its wording, and not in any particular display, we must consider Registrant’s mark “regardless of font style, size, or color,” including iterations that present Registrant’s mark in a similar stylized form. Citigroup Inc. v. Cap. City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1258-59 (Fed. Cir. 2011); In re RSI Sys., LLC, 88 USPQ2d 1445 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); TMEP § 1207.01(c)(iii). We bear in mind that the “marks ‘must be considered . . . in light of the fallibility of memory,”’ In re St. Helena Hosp., 113 USPQ2d at 1085, and that the proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. See Mini Melts, Inc. v. Reckitt Benckiser LLC, 118 USPQ2d 1464, 1470 (TTAB 2016); In re Mr. Recipe, LLC, 118 USPQ2d 1084, 1089 (TTAB 2016). In this case, there is a much higher probability that the word OXFORD in each mark will be impressed upon the average consumer’s mind and retained for Serial Nos. 88388223 and 88388249 - 18 - purposes of later recalling the marks even in the case of the more sophisticated commercial real estate consumer. Thus, in terms of appearance, sound, connotation, and commercial impression, we find the marks are similar based on the common word OXFORD. In view thereof, the similarity of Applicant’s OXFORD marks and Registrant’s OXFORD mark weighs in favor of likelihood of confusion. III. Conclusion In balancing the factors, because of the highly similar marks, in-part legally identical and otherwise closely related services and the overlap in trade channels and classes of consumers, despite some care in the purchasing decision, confusion is likely. Decision: The refusals to register Applicant’s marks are affirmed. Copy with citationCopy as parenthetical citation