RE/MAX International Inc.

Trademark Trial and Appeal Board

Dec 10, 2008

No. 91175272 (T.T.A.B. Dec. 10, 2008)

Mailed:
December 10, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

RE/MAX International Inc.
v.
Somraj Singh
_____

Opposition No. 91175272
to application Serial No. 78800579
filed on January 26, 2006
_____

John R. Posthumus of Greenberg Taurig, LLP for RE/MAX
International, Inc.

Olumide K. Obayemi, Esq. for Somraj Singh.
______

Before Seeherman, Walters and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Somraj Singh (“applicant”) filed an intent-to-use
application for the mark SAVEMAX REALTY and design, shown
below, for “real estate brokerage” services, in Class 36.

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91175272
2
Applicant disclaimed the exclusive right to use the word
“realty.”
RE/MAX International, Inc. (“opposer”) filed a notice
of opposition against the registration of applicant’s mark
on the ground of priority of use and likelihood of confusion
pursuant to Section 2(d) of the Trademark Act of 1946, 15
U.S.C. §1052(d).1 Specifically, opposer alleged that it is
the owner of eight federally-registered RE/MAX marks,
including REMAX, in typed drawing form, for, inter alia,
real estate brokerage services, that its RE/MAX marks are
famous, and that applicant’s mark is likely to cause
confusion with opposer’s RE/MAX marks.
Applicant denied the essential allegations in the
notice of opposition.
The Record
By rule, the record includes applicant’s application
file and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, opposer introduced the following
testimony and evidence:
1. The testimony deposition of Vincent J. Tracey,
opposer’s President, with attached exhibits;

1 Opposer also alleged that applicant’s mark creates a false
suggestion of a connection with opposer and it dilutes the
distinctive nature of opposer’s trademarks. However, because
opposer did not argue the issue of dilution or a false suggestion
of a connection in its brief, we consider those claims to have
been waived.
Opposition Nos. 91175272
3
2. The discovery deposition of applicant with
attached exhibits;2
3. Notices of reliance introducing photocopies of
opposer’s pleaded registrations issued by the U.S. Patent
and Trademark Office showing the current status of the
registrations and the title of the registrations in
opposer’s name;
4. A notice of reliance on applicant’s responses to
opposer’s first set of interrogatories; and,
5. A notice of reliance on applicant’s responses to
opposer’s requests for admission.
Applicant did not introduce any testimony or evidence.
Standing
Because opposer has properly made its pleaded
registrations of record, opposer has established its
standing. Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842, 1844 (Fed. Cir. 2000); Lipton Industries, Inc.
v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982).

2 Opposer filed applicant’s discovery deposition as an attachment
to its brief. Trademark Rule 2.120(j)(3)(i) provides that a
discovery deposition may be made of record by the propounding
party through a notice of reliance filed during its testimony
period. Applicant’s discovery deposition was not timely filed,
nor was it introduced through a notice of reliance. However,
because applicant did not object to the introduction of his
discovery deposition and, in fact, treated it as being of record,
we consider the admission of applicant’s discovery deposition to
have been stipulated into the record by the parties.
Opposition Nos. 91175272
4
Priority

Because opposer’s pleaded registration are of record,
Section 2(d) priority is not an issue in this case as to the
marks and the services covered by the registrations. King
Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182
USPQ 108 (CCPA 1974).
Likelihood of Confusion
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the 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 Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003).
A. The fame of opposer’s RE/MAX marks.

This du Pont factor requires us to consider the fame of
opposer’s of marks. Fame, if it exists, plays a dominant
role in the likelihood of confusion analysis because famous
marks enjoy a broad scope of protection or exclusivity of
use. A famous mark has extensive public recognition and
renown. Bose Corp. v. QSC Audio Products Inc., 293 F.3d
1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v.
M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir.
2000); Kenner Parker Toys, Inc. v. Rose Art Industries,
Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992).
Opposition Nos. 91175272
5
Fame may be measured indirectly by the volume of sales
and advertising expenditures of the goods and services
identified by the marks at issue, “by the length of time
those indicia of commercial awareness have been evident,”
widespread critical assessments and notice by independent
sources of the products identified by the marks, as well as
the general reputation of the products and services. Bose
Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1305-1306 and
1309. Although raw numbers of product sales and advertising
expenses may have sufficed in the past to prove fame of a
mark, raw numbers alone may be misleading. Some context in
which to place raw statistics may be necessary (e.g., the
substantiality of the sales or advertising figures for
comparable types of products or services). Bose Corp. v.
QSC Audio Products Inc., 63 USPQ2d at 1309.
Finally, because of the extreme deference that we
accord a famous mark in terms of the wide latitude of legal
protection it receives, and the dominant role fame plays in
the likelihood of confusion analysis, it is the duty of the
party asserting that its mark is famous to clearly prove it.
Leading Jewelers Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d
1901, 1904 (TTAB 2007).
Opposition Nos. 91175272
6
The following testimony establishes that opposer’s
RE/MAX marks are famous for purposes of analyzing likelihood
of confusion:
1. Opposer has 4,315 RE/MAX offices in the United
States;3
2. Opposer has 80,000 RE/MAX sales associates in the
United States;4
3. Opposer has a 16% market share;5
4. Since Opposer launched its REMAX.com website in
March 2006, the website has listed 3.9 million
properties generating 3.3 million leads for its
sales associates.6 and,
5. Opposer has extensively advertised its RE/MAX real
estate services. For example, in 2007, opposer
spent approximately $50 million for advertising in
the United States encompassing television, radio
and print.7 However, when all the advertising by
opposer’s sales associates in regional and local
offices is considered, opposer spent approximately
$1 billion on advertising in 2007.8 That means
that in 2007, approximately 47% of the paid

3 Tracey Dep., p. 34.
4 Tracey Dep., p. 35.
5 Tracey Dep., p. 39
6 Tracey Dep., p. 50
7 Tracey Dep., p. 89.
8 Tracey Dep., p. 110.
Opposition Nos. 91175272
7
advertising in the real estate field in the United
States was by opposer. In 2006, opposer’s
advertising was approximately 48% of the real
estate advertising in the United States.9 Another
way of analyzing the effectiveness of opposer’s
advertising is that in 2007, opposer’s advertising
made 14 billion “impressions” on people between
the ages of 25-54, the prime buying public.10
In view of the foregoing, we find that opposer’s RE/MAX
marks are famous for purposes of analyzing likelihood of
confusion.
B. The similarity or dissimilarity and nature of the
services at issue.

Opposer has registered REMAX, in typed drawing form,11
and RE/MAX and design, shown below,12 both for real estate
brokerage services.

Applicant is seeking to register his SAVEMAX REALTY and
design mark for real estate brokerage services.
Accordingly, the services are identical.

9 Tracey Dep., pp. 91.
10 Tracey Dep., pp. 92-93.
11 Registration No. 2106387, issued October 21, 1997; affidavits
under Sections 8 and 15 accepted and acknowledged; renewed.
12 Registration No. 2119607, issued December 9, 1997; affidavits
under Sections 8 and 15 accepted and acknowledged; renewed.
Opposition Nos. 91175272
8
C. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

Because we have found that the parties’ services are
identical, we must presume that the channels of trade and
classes of purchasers are the same. Genesco Inc. v. Martz,
66 USPQ2d 1260, 1268 (TTAB 2003) (“Given the in-part (sic)
identical and in-part (sic) related nature of the parties’
goods, and the lack of any restrictions in the
identifications thereof as to trade channels and purchasers,
these clothing items could be offered and sold to the same
classes of purchasers through the same channels of trade”);
In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994)
(“Because the goods are legally identical, they must be
presumed to travel in the same channels of trade, and be
sold to the same class of purchasers”).
d. The similarity of the marks in their entireties in
terms of appearance, sound, meaning, and connotation.

We now turn 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., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In comparing the marks, we
Opposition Nos. 91175272
9
are mindful that where, as here, the services are identical,
the degree of similarity necessary to find likelihood of
confusion need not be as great as where there is a
recognizable disparity between the goods and services.
Century 21 Real Estate Corp. v. Century Life of America, 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); Real Estate
One, Inc. v. Real Estate 100 Enterprises Corporation, 212
USPQ 957, 959 (TTAB 1981); ECI Division of E-Systems, Inc.
v. Environmental Communications Incorporated, 207 USPQ 443,
449 (TTAB 1980).
While the marks must be compared in their entireties,
in analyzing the similarity or dissimilarity of two marks,
there is nothing improper in stating that for rational
reasons, more or less weight has been given to a particular
feature of a mark. In re National Data Corporation, 753
F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985). This is an
important principle in analyzing the similarities of the
marks at issue because the only similarity between
applicant’s mark and opposer’s marks is the suffix “max” in
SAVEMAX and REMAX. “Max” is an abbreviation for the
descriptive or highly suggestive word “maximum.”13

13 Webster’s New Collegiate Dictionary, p. 710 (1977); The
American Heritage Dictionary: 2nd College Edition, p. 774 (1976).
As a general rule, the Board may take judicial notice of
dictionary evidence. University of Notre Dame du Lac v. J. C.
Gourmet Food Imports Co., 213 USPQ 594, 596 (TTAB 1982), aff’d,
703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983).
Opposition Nos. 91175272
10
Accordingly, when we consider the marks in their entireties,
we are of the opinion that they differ substantially in
appearance, sound, meaning and commercial impression.
Opposer contends that because the marks “share the
prominent use of the suffix ‘MAX’” they are similar in
meaning and commercial impression.14 Opposer’s President,
Vincent Tracey, testified that RE/MAX means “the maximum in
real estate” to broker/owners and sales associates15 and
that to consumers it means the most experienced people in
real estate.16 However, applicant testified that he
selected the term SAVEMAX to convey the commercial
impression that consumers “can save maximum money through
[applicant’s] brokerage company.”17 While both parties’
adopted their marks to connote a “maximum” quality, their
marks emphasize different qualities (i.e., the maximum in
real estate and experience vs. maximum savings). While
there is no testimony in the record to corroborate how
consumers actually perceive the marks, we find that the
testimony of Mr. Tracey and applicant illustrate that the
meanings and commercial impressions of the marks are
different. See Mead Johnson & Company v. Peter Eckes, 195
USPQ187, 191 (TTAB 1977) (while the parties may have adopted

14 Applicant’s Brief, p. 17-19.
15 Tracey Dep., p. 31.
16 Tracey Dep., p. 32.
17 Singh Dep., p. 35.
Opposition Nos. 91175272
11
the “cal” or “kal” suffix to connote low caloric content,
and while opposer may have priority of use and may have
achieved notoriety, “this cannot preclude others engaged in
marketing competitive, related, or similar goods from
adopting and registering marks projecting a similar
suggestion if they are otherwise readily distinguishable in
sound and appearance”). See also Stouffer Corporation v.
Health Valley Natural Foods Inc., 1 USPQ2d 1900, 1903 (TTAB
1986) (LEAN LIVING for chicken, crepes, lasagna and
enchiladas is not similar to LEAN CUISINE for frozen entrees
because the only similarity between the marks is the
suggestive word “lean”). The marks are also obviously
different in appearance and pronunciation because of the
differences in the initial portions of the marks.
We do not agree with opposer’s argument that the
dominant portion of applicant’s mark is the suffix “max.”18
To the extent that consumers would place more emphasis on
one part of applicant’s mark, we believe that they would be
more likely to put that emphasis on the word “save” because
it is the first part of the word portion of the mark.
Presto Products Inc. v. Nice-Pak Products, Inc., 9 USPQ2d
1895, 1897 (TTAB 1988)(“it is often the first part of a mark
which is most likely to be impressed upon the mind of a
purchaser and remembered”). See also Palm Bay Imports Inc.

18 Opposer’s Reply Brief, pp. 6-7.
Opposition Nos. 91175272
12
v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689,
1692 (Fed. Cir. 2005)(“Veuve” is the most prominent part of
the mark VEUVE CLICQUOT because “veuve” is the first word in
the mark and the first word to appear on the label); Century
21 Real Estate Corp. v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon
encountering the marks, consumers must first notice the
identical lead word).
Finally, although Mr. Tracey testified that “whenever
you see ‘Max,” anything related to real estate, everybody
thinks of RE/MAX first,”19 we note that opposer has not
pleaded, nor has it argued, that it is the owner of a
“family” of “max” service marks. In other words, opposer
does not contend that it is the owner of a group of
different marks having a “max” suffix that have been used in
such a way that consumers would recognize all the different
“max” marks used in connection with real estate marks with
opposer. See J & J Snack Foods Corp. v. McDonald’s Corp.,
932 F.2d 1460, 18 USPQ2d 1889, 1891 (Fed. Cir. 1991). In
fact, according to the record, opposer is the owner of eight
federally-registered RE/MAX marks in the real estate field.
Therefore, the issue before us is essentially whether
SAVEMAX REALTY and design is confusingly similar to
opposer’s RE/MAX marks.

19 Tracey Dep., p. 118.
Opposition Nos. 91175272
13
In view of the foregoing, we find that the marks are
not similar in terms of their appearance, sound, meaning or
commercial impression.
E. Bad faith.
Opposer contends that applicant acted in bad faith when
he selected his SAVEMAX service mark because applicant was
aware of the RE/MAX marks, applicant did not conduct a
trademark search, and applicant did not proffer advice of
counsel as a defense.20 Furthermore, opposer argues that
applicant intended that his SAVEMAX mark have the same
meaning and commercial impression as opposer’s marks because
applicant used the abbreviation “max,” rather than the full
word “maximum.”21
Because of the differences in the marks, the points
relied upon by opposer do not support the premise that
applicant acted in bad faith. There is no requirement that
an applicant obtain a trademark search before adopting a
mark. Further, even if applicant had been aware of
opposer’s mark, the marks are so different that no bad faith
can be attributed to applicant as a result of his decision
to proceed with the mark SAVEMAX REALTY and design. Based
on the record before us, applicant’s knowledge of opposer’s
marks and failure to conduct a trademark search do not

20 Opposer’s Brief, pp. 21-22; Opposer’s Reply Brief, p. 9.
21 Opposer’s Brief, p. 19.
Opposition Nos. 91175272
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constitute a sufficient basis for us to infer that applicant
acted in bad faith.
F. Balancing the factors.
Because applicant’s SAVEMAX REALTY and design mark is
so different from opposer’s RE/MAX marks, we find that there
is no likelihood of confusion by the contemporary use of the
marks. We reach this conclusion despite the fame of
opposer’s RE/MAX marks, the fact that the services rendered
by the parties are identical and the presumption that the
services are rendered in the same channels of trade and to
the same classes of consumers. In other words, the
dissimilarity of the marks simply outweighs the other
factors. See Kellogg Co. v. Pack’Em Enterprises Inc., 14
USPQ2d 1545, 1550 (TTAB 1990), aff’d, 951 F.2d 330, 21
USPQ2d 1142, 1145 (Fed. Cir. 1991). See also Stouffer
Corporation v. Health Valley Natural Foods Inc., 1 USPQ2d
1906 (“while the fame of opposer’s mark and the identity of
the parties’ goods and their channels of trade tend to favor
opposer’s case, we are not persuaded that these
circumstances are sufficient to refuse registration to
applicant in view of our finding that LEAN CUISINE and LEAN
LIVING, applied to the goods herein are not confusingly
similar in sound, appearance or commercial impression”).
Decision: The opposition is dismissed with prejudice.