Santa Fe Realty Partners Inc.

Trademark Trial and Appeal Board

Apr 14, 2009

No. 77382325 (T.T.A.B. Apr. 14, 2009)

Mailed:
April 14, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Santa Fe Realty Partners Inc.
________

Serial No. 77382325
_______

Carol Matthews of Roberts Mlotkowski Safran & Cole, P.C.
for Santa Fe Realty Partners Inc.

Raul Cordova, Trademark Examining Attorney, Law Office 114
(K. Margaret Le, Managing Attorney).
_______

Before Bucher, Rogers and Zervas, Administrative Trademark
Judges.

Opinion by Zervas, Administrative Trademark Judge:

Santa Fe Realty Partners Inc. (“applicant”) filed an
application (Serial No. 77382325) under Section 1(b) of the
Trademark Act, 15. U.S.C. § 1051(b), on January 28, 2008 to
register NATIONAL REALTY PARTNERS (in standard character
form) on the Principal Register for “real estate brokerage
services” in International Class 36.
The examining attorney has finally refused
registration under (i) Section 2(e)(1) of the Trademark
THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.
Ser No. 77382325
2
Act, 15 U.S.C. Section 1052(e)(1), on the ground that
applicant's proposed mark merely describes a feature of
applicant's services, and (ii) Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that
applicant's mark so resembles the previously registered
mark NATIONAL REAL ESTATE SERVICE (in typed form)
(Registration No. 1843168, issued on July 5, 1994 and
renewed) for “real estate brokerage service” as to be
likely to cause confusion or mistake or to deceive. REAL
ESTATE SERVICE has been disclaimed and the mark was
registered under the provisions of Section 2(f) of the
Trademark Act, 15 U.S.C. §1052(f).1
Applicant has appealed the final refusals. Both
applicant and the examining attorney have filed briefs.
Mere Descriptiveness
We consider first the examining attorney’s Section
2(e)(1) refusal. A mark is merely descriptive if it
immediately describes the ingredients, qualities, or
characteristics of the goods or services or if it conveys
information regarding a function, purpose, or use of the

1 Applicant filed an amendment to allege use on March 30, 2009,
which was more than six months after the date of the examining
attorney’s final Office action. Because we affirm the refusal to
register and consideration of the specimen of use submitted with
the amendment to allege use would not change our decision in this
appeal, the amendment to allege use is moot. See TBMP § 1206.01
(2d ed. rev. 2004).
Ser No. 77382325
3
goods or services. In re Abcor Development Corp., 588 F.2d
811, 200 USPQ 215 (CCPA 1978). See also In re Nett
Designs, 236 F.3d 1339, 57 USPQ2d 1564 (Fed. Cir. 2001).
To be merely descriptive, a term need only describe a
single significant quality or property of the goods or
services. In re Gyulay, 820 F.2d 1216, 3 USPQ2d 1009 (Fed.
Cir. 1987). Also, “[t]he perception of the relevant
purchasing public sets the standard for determining
descriptiveness. Thus, a mark is merely descriptive if the
ultimate consumers immediately associate it with a quality
or characteristic of the product or service. On the other
hand, if a mark requires imagination, thought, and
perception to arrive at the qualities or characteristics of
the goods or services, then the mark is suggestive.” In re
MBNA America Bank N.A., 340 F.3d 1328, 67 USPQ2d 1778, 1780
(Fed. Cir. 2003) (citations and internal quotation marks
omitted).
The examining attorney relies on the following
dictionary definitions taken from The American Heritage
Dictionary of the English Language, 4th ed. 2000, located
at bartleby.com, and submitted with the Office action
mailed May 13, 2008:
NATIONAL: “1. Of, relating to, or belonging to a
nation as an organized whole: a national anthem.”

Ser No. 77382325
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REALTY: “Real estate.”

PARTNERS: “1. One that is united or associated
with another or others in an activity or a sphere
of common interest….”

According to the examining attorney, NATIONAL REALTY
PARTNERS “informs customers and potential customers on the
subject matter, scope and level of association between them
and applicant. The mark states that applicant provides
real estate related services to the entire country and that
customers can expect to be associated with applicant as
they pursue a given common interest in the field of real
estate.” Brief at unnumbered p. 4.
Applicant’s arguments in favor of registration focus
on the term PARTNER. According to applicant, “[t]here is
no support whatsoever in the record for the proposition
that the word ‘PARTNERS’ describes any relationship between
real estate brokers and their clients or customers. The
definitions of ‘partners’ applied by the Examiner do not
include any reference to customers or clients as being
Partners of a vendor of any product or service.” Brief at
p. 4. Applicant adds that:
It is apparent that a person or legal entity
which is a client or customer of real estate
brokerage services is not a partner of the person
or business that provides the real estate
brokerage services. It would be wholly
unrealistic to treat a customer of real estate
services as a partner of the person or entity
Ser No. 77382325
5
providing the real estate brokerage services. If
the contrary [sic] were true, every real estate
transaction in which a real estate broker or
agent provides services would create a
partnership, which would result in legal and
financial entanglements and burdens that would be
impossible to sustain.2

Id. at p. 5.
We are not persuaded by applicant's arguments that the
proposed mark is not merely descriptive. NATIONAL
identifies the scope of applicant's services, i.e., that
they are available throughout the United States. REALTY
identifies the subject area of applicant's services, i.e.,
real estate, included within applicant's identification of
services. As for PARTNERS, the definition of record of
“partner” includes “[o]ne that is united or associated with
another or others in an activity or a sphere of common
interest.” Certainly, a real estate broker and his or her
client are united or associated with each other in an
activity of common interest, i.e., the sale of the client’s
property. Alternatively, the real estate broker may be a
partner with others such as appraisers and mortgage lenders
in the united activity of a sale or purchase of a property.
“Legal and financial entanglements and burdens,” which

2 Applicant has quoted in its brief from a definition of
“partner” which is not of record. We decline to take judicial
notice of this definition because we have not been provided a
copy. Even if we were to take judicial notice of the definition,
our decision herein would not be any different.
Ser No. 77382325
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applicant argues are needed, are not required under the
definition. Thus, PARTNERS is a term that describes a
relationship, which may be, but is not necessarily always
and only, a relationship legal in nature, between applicant
and its client or between applicant and others in the
field. Either connotation, however, is descriptive.
Additionally, the combination of “national,” “realty”
and “partners” does not evoke a unique commercial
impression. It also is not incongruous or bizarre as
applied to the services. See In re Shutts, 217 USPQ 363
(TTAB 1983). It does, however, describe the relationship
between applicant and its clients, i.e., a relationship in
the field of real estate, nationwide in scope, with
applicant and its client united in a common activity.
Further, it does so without imagination, thought or
perception on the part of the consumer. We therefore find
that the examining attorney has established prima facie
that applicant's mark is merely descriptive of a feature of
applicant's services and that applicant has not rebutted
the prima facie case. Accordingly, we conclude that
applicant's mark is merely descriptive and unregistrable
under Section 2(e)(1).
Ser No. 77382325
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Likelihood of Confusion
Our finding that applicant's mark is merely
descriptive is sufficient to bar its registration.
However, in order to render a complete opinion on both of
the refusals at issue in this appeal, we will consider the
likelihood of confusion ground as well. In discussing this
refusal, we will treat applicant's mark as being highly
suggestive.
Our determination under Trademark Act § 2(d) is based
on an analysis of all of the probative facts in evidence
that are relevant to the factors bearing on the likelihood
of confusion issue. See In re E.I. du Pont de Nemours and
Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also
Palm Bay Imp., Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir.
2005); In re Majestic Distilling Co., Inc., 315 F.3d 1311,
65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Rests.
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997).
In considering the evidence of record on these
factors, we keep in mind that “[t]he fundamental inquiry
mandated by Section 2(d) goes to the cumulative effect of
differences in the essential characteristics of the goods
[or services] and differences in the marks.” Federated
Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192
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USPQ 24, 29 (CCPA 1976); and In re Azteca Rest. Enters.,
Inc., 50 USPQ2d 1209 (TTAB 1999).
A. The Similarity Or Dissimilarity And Nature Of The
Services as Described in the Application.
Both applicant's and registrant’s services are “real
estate brokerage services.” The services are identical,
and this factor supports the examining attorney's refusal
of registration.
B. The Similarity Or Dissimilarity of the Marks in Their
Entireties as to Appearance, Sound, Connotation and
Commercial Impression.

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 73
USPQ2d at 1692. “[T]he test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their overall commercial impression so that
confusion as to the source of the goods [or services]
offered under the respective marks is likely to result.”
H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB
2008).
We begin our comparison with the observation that
“[w]hen marks would appear on virtually identical goods or
services, the degree of similarity necessary to support a
Ser No. 77382325
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conclusion of likely confusion declines.” Century 21 Real
Estate Corp. v. Century Life of Am., 970 F.2d 874, 23
USPQ2d 1698, 1701 (Fed. Cir. 1992). As noted above,
applicant's services are identical to those identified in
the cited registration.
Applicant's mark is NATIONAL REALTY PARTNERS, while
the mark in the cited prior registration is NATIONAL REAL
ESTATE SERVICE. Both marks are presented in standard
character or typed form, and thus could be used in a
variety of typefaces, type sizes, or colors. Also, both
marks begin with the term NATIONAL; and REALTY and REAL
ESTATE are visually and aurally similar. The overall marks
hence are similar visually and in sound.
Applicant has argued that registrant has disclaimed
REAL ESTATE SERVICE; that REAL ESTATE SERVICE is generic;
that REAL ESTATE SERVICE “plays a very small role in the
evaluation of likelihood of confusion”; and that REAL
ESTATE SERVICE is “specifically different” from REALTY
PARTNERS, with PARTNERS being an arbitrary term for real
estate brokerage services. Brief at p. 6. We agree that
REAL ESTATE SERVICE plays a very small role in the meaning
and commercial impression of the mark in view of its
generic nature. NATIONAL hence is the dominant term in
registrant’s mark.
Ser No. 77382325
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Similarly, NATIONAL is the dominant term in
applicant's mark. NATIONAL is the first term in the mark,
REALTY is a generic term, and, for the reasons discussed
above, PARTNERS is a descriptive term.3 The addition of
PARTNERS does not significantly change the meaning of
applicant's mark from that of registrant’s mark.
Ultimately, both marks convey the notion that their real
estate brokerage services are national in nature.
We find that applicant's and registrant’s marks are
significantly similar in appearance, sound, meaning and
commercial impression. Assuming NATIONAL is a weak
designation in registrant’s mark, even weak marks are
deserving of protection, and the strong similarities in the
marks at issue here are sufficient to overcome that
weakness.
This factor thus supports the examining attorney's
finding of a likelihood of confusion.
C. The Similarity or Dissimilarity of Established, Likely-
to-Continue Trade Channels.

We begin by noting that the cited registration
includes identical “real estate brokerage services” without
limitation to particular channels of trade or classes of

3 We reject applicant's contention at p. 6 of its brief that
PARTNERS “is an arbitrary term for real estate brokerage
services.”
Ser No. 77382325
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consumers. When identical goods or services are recited in
an application and registration with no limitations as to
their channels of trade or classes of consumers, such
channels of trade and classes of consumers must be
considered to be legally identical. Genesco Inc. v. Martz,
66 USPQ2d 1260, 1268 (TTAB 2003)(“Given the in-part
identical and in-part 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.”). Accordingly, we
must consider applicant's services to be offered in the
same channels of trade to the same potential purchasers.
This factor further supports the examining attorney's
refusal to register.
D. Conclusion

After careful consideration of the record evidence and
arguments, we conclude that use of applicant's mark on or
in connection with the identified services is likely to
Ser No. 77382325
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cause confusion with the mark in the cited prior
registration.
Decision: The refusals to register under Trademark Act
§§ 2(d) and 2(e)(1) are accordingly affirmed.