United Country Real Estate, Inc.v.Christopher B. Colwell

Trademark Trial and Appeal Board

Aug 30, 2006

No. 91158548 (T.T.A.B. Aug. 30, 2006)

Mailed:
August 30, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

United Country Real Estate, Inc., by change of name from
First Horizon Corporation

v.

Christopher B. Colwell
_____

Opposition No. 91158548
to application Serial No. 78181779
filed on November 5, 2002
_____

Thomas H. Van Hoozer and Cheryl L. Burbach of Hovey Williams
LLP for United Country Real Estate, Inc.

Christopher B. Colwell, pro se.
______

Before Seeherman, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

United Country Real Estate, Inc., by change of name
from First Horizon Corporation,1 has opposed the application

1 After the institution of this proceeding opposer’s name was
changed, and this change was recorded in the Assignment Division
of the USPTO. The Board changed the captioning of this
proceeding on May 10, 2005 to reflect the change of name.

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB
Opposition No. 91122373
2
of Christopher B. Colwell to register REALTY UNITED, with
the word REALTY disclaimed, as a mark for “franchising
services, namely, rendering technical assistance to others
in the establishment and or operation of real estate
brokerage businesses and associated services.”2 As grounds
for opposition, opposer has alleged that it, or its
predecessors in interest, has continuously used the
trademarks UNITED, UNITED COUNTRY and UNITED NATIONAL REAL
ESTATE and design, or variations thereof, for real estate
brokerage services since prior to the filing date of
applicant’s application; that opposer is the owner of
registrations for the marks UNITED for “real estate
brokerage services,”3 UNITED COUNTRY for a “real estate
magazine”4 and for “real estate brokerage services”5 and
UNITED COUNTRY and design, as shown below, for “real estate
brokerage services”;6

2 Application Serial No. 78181779, filed November 5, 2002,
pursuant to Section 1(b) of the Trademark Act (intent-to-use).
3 Registration No. 1109683, issued December 19, 1978; Section 8
& 15 affidavits accepted and acknowledged; renewed.
4 Registration No. 1770019, issued May 11, 1993; Section 8 & 15
affidavits accepted and acknowledged; renewed.
5 Registration No. 2186596, issued September 1, 1998. Opposer
submitted a status and title copy of this registration, prepared
by the USPTO on November 3, 2003, with its notice of opposition
filed on November 12, 2003. Consequently, the copy of the
registration does not indicate whether a Section 8 affidavit was
subsequently filed. In accordance with Board practice in such
circumstances, we have ascertained from Office records that
Section 8 & 15 affidavits were accepted and acknowledged.
6 Registration No. 2188368, issued September 8, 1998. Opposer
submitted a status and title copy of this registration, prepared
by the USPTO on November 7, 2003, with its notice of opposition
filed on November 12, 2003. Consequently, the copy of the
Opposition No. 91122373
3

that opposer is the owner of a family of marks bearing the
common term UNITED in the real estate brokerage field; that
opposer provides its real estate brokerage services through
its affiliated licensees and franchisees throughout the
United States, and has provided franchising services
including technical and other supporting services to its
licensees and franchisees; and that applicant’s use of the
mark REALTY UNITED is likely to cause confusion with
opposer’s UNITED family of marks, including UNITED, UNITED
COUNTRY and UNITED NATIONAL REAL ESTATE. The notice of
opposition was accompanied by status and title copies of
opposer’s pleaded registrations, and therefore these
registrations are of record. See Trademark Rule
2.122(d)(1).7

registration does not indicate whether a Section 8 affidavit was
subsequently filed. We have therefore ascertained that Section 8
& 15 affidavits were accepted and acknowledged.
7 Opposer also pleaded ownership of Registration No. 1348533 for
UNITED NATIONAL REAL ESTATE and design for “real estate brokerage
services,” but Office records show that this registration expired
pursuant to Section 9 of the Trademark Act. While this
registration has been given no consideration, opposer has
submitted testimony that the mark is still in use.
Opposition No. 91122373
4
In his answer, applicant admitted that “opposer has
continuously used the trademarks UNITED COUNTRY and UNITED
NATIONAL REAL ESTATE for real estate brokerage services from
a date prior to the filing date or the claimed date of first
use of the opposer application”; that opposer is the owner
of Registration Nos. 1109684, 1348533, 1770019, 2186596 and
2188368; that “Opposer has spent substantial sums of money
in advertising and promoting its real estate magazine
distributed under the UNITED COUNTRY mark”; that “Opposer
has spent substantial sums of money in advertising and
promoting its real estate brokerage services rendered under
the UNITED COUNTRY service mark” and that “Opposer has spent
substantial sums of money in advertising and promoting its
real estate brokerage services rendered under the UNITED
COUNTRY AND DESIGN service marks”; that “Opposer is owner of
marks UNITED, UNITED COUNTRY, UNITED COUNTRY AND DESIGN, and
UNITED NATIONAL REAL ESTATE AND DESIGN, all marks being
registered in International Class 36”; that “Opposer, using
the marks UNITED COUNTRY and UNITED COUNTRY AND DESIGN
provides its real estate services through affiliated
licensees and franchisees spanning the United States, and
that Opposer, under these marks, has provided franchising
services including technical and other supporting services
to its licensees and franchisees” prior to applicant’s
filing date; that “Opposer, itself or through its licensees
Opposition No. 91122373
5
or franchisees has used the marks UNITED COUNTRY and UNITED
COUNTRY AND DESIGN throughout the United States, and as a
result of such use, the advertising of these marks and the
rendering of real estate brokerage services, said marks have
acquired substantial reputation and goodwill as indicating
the Opposer as the source of the real estate brokerage
services in connection with the above mentioned mark”; and
that applicant “provides services in regard to franchising,
and that its franchisees or licensees provide general real
estate brokerage services to the public.” Applicant has
otherwise denied the salient allegations of the notice of
opposition. We note that applicant has also, in denying
many of these allegations, included argument and/or further
explanation for his denials. Applicant has also submitted a
number of exhibits with his answer; such exhibits cannot be
made of record in this manner.
The record includes, by operation of the rules, the
pleadings and the file of the opposed application. Only
opposer has submitted evidence, which consists of the trial
testimony, with exhibits, of Louis Francis, opposer’s
president; applicant’s responses to certain of opposer’s
interrogatories; applicant’s responses to certain of
opposer’s requests for admission; opposer’s four pleaded
registrations for UNITED, UNITED COUNTRY and UNITED COUNTRY
and design, as set forth above, status and title copies of
Opposition No. 91122373
6
which were submitted with opposer’s notice of opposition;8
certain printed publications; and copies of certain
decisions and/or orders of the Courts and the Board,
submitted as official records pursuant to Trademark Rule
2.122(e).9
Only opposer filed a brief. An oral hearing was not
requested.
Opposer’s predecessor was founded in 1925 as United
Farm Agency. In 1986, United National Real Estate was
formed, through an asset purchase of the previous company.
At that point the company used the marks United Farm, United
National, United and United Commercial. In 1990 opposer
First Horizon Corporation, doing business as United National
Real Estate, acquired the assets of United National Real
Estate, Inc. and later changed its name to United Country
Real Estate, Inc. Some franchises continue to operate under
the mark United National, while the majority use the mark
United Country Real Estate. Since 1925 opposer or its

8 Although opposer also submitted a copy of Registration No.
1348533 for UNITED NATIONAL REAL ESTATE and design with its
notice of reliance that was filed on October 13, 2005, as noted
in footnote 7, this registration has expired.
9 In its brief opposer states that the record consists of 57
exhibits, which it enumerates. However, it is clear that opposer
made of record additional exhibits, including applicant’s
responses to certain requests for admission which opposer
specifically refers to in its brief. We therefore treat all the
materials which opposer properly made of record as being of
record, not just those exhibits which opposer listed in section
III of its brief.
Opposition No. 91122373
7
predecessors have used the mark UNITED in one form or
another.
Between 1925 and 1975 the company enjoyed rapid growth.
Its network of independent brokers increased in size; as of
January 1, 2001 opposer had 323 franchisees, and as of the
end of 2005 the number had reached 500. These franchisees
are located throughout the United States, in 35 states.
Opposer offers such services to its franchisees as marketing
tools (catalogs, advertisements, website, signs, brochures)
and technical support (help with their computer systems).
Opposer has marketed its franchising services through
advertisements in real estate publications, franchise sales
teams that call on brokers, direct mail to real estate
brokers, trade shows, real estate conventions, and its
website.
The only information we have about applicant is from
his discovery responses and admissions that were made of
record by opposer. Applicant is the founder and owner of
Realty United, LLC and the owner of Realty United—Triangle,
which provides real estate brokerage/consulting services.
Applicant uses or will use his mark in connection with the
promotion and pending sale of real estate franchising
services; franchisees will offer real estate brokerage
services using applicant’s mark REALTY UNITED as part of
their trade names, for example, “Realty United—Triangle.”
Opposition No. 91122373
8
Applicant did not make any use of the name or mark REALTY
UNITED prior to October 28, 2002. At the time applicant
adopted his mark, he was aware of opposer’s use of its mark.
As of July 5, 2005, the date applicant responded to
opposer’s interrogatories, only one real estate brokerage,
Realty United-Triangle, was associated with applicant. As
noted above, this brokerage is owned by applicant. As of
that date, applicant had not entered into any licensing or
franchising agreements, and no franchises existed.
Applicant has not had any purchasers of its franchising
services, although it has had purchasers of its real estate
brokerage services. Applicant offers his services in the
Raleigh-Durham-Chapel-Hill area (the “Triangle” area) of
North Carolina. Applicant has used his mark on or in
connection with marketing postcards, websites, signs, press
releases and classified ads, although it is not clear
whether such uses are with respect to his real estate
brokerage services or are for the advertising of his
franchising services.
Priority is not in issue in view of opposer’s
registrations, which are of record. King Candy Company v.
Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974). Moreover, the evidence shows that opposer
began using its various UNITED marks for both real estate
Opposition No. 91122373
9
brokerage services and franchising services prior to the
earliest use date that could be claimed by applicant.10
Our determination of the issue of likelihood of
confusion is based on an analysis of all of the probative
facts in evidence that are relevant to the factors set forth
in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also, In re Majestic Distilling
Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003). In this case, opposer has identified three factors
that are relevant: similarity of the marks, similarity of
the services, and similarity of the channels of trade.
The first du Pont factor is the similarity of the
marks. Opposer has pleaded ownership of, and has submitted
registrations and testimony regarding several marks
containing or consisting of the word UNITED. Because the
mark UNITED per se is the closest mark to applicant’s mark,
UNITED REALTY, we will concentrate our analysis on a
comparison of opposer’s mark UNITED with UNITED REALTY. It
is a well-established principle that, in articulating
reasons for reaching a conclusion on the issue of likelihood

10 As noted, applicant has admitted that he did not begin using
his mark prior to October 28, 2002. In an answer to an
interrogatory, made of record by opposer, applicant claimed he
began using the mark REALTY UNITED on November 5, 2002. It is
not clear from this response whether this use was in connection
with the franchising services identified in his application,
rather than real estate brokerage services. In view of the clear
admission that he made no use of the mark prior to October 22,
2002 whether or not he used the mark in November 2002 has no
effect on the question of priority.
Opposition No. 91122373
10
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 a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). In applicant’s mark, UNITED
REALTY, the term UNITED is clearly the dominant element.
Applicant’s franchising services, as shown by his
identification, as well as the information he provided in
discovery, deal with real estate brokerage, and he has
provided a disclaimer of “realty” because of the
descriptiveness of this term. Opposer has also submitted
dictionary definitions of “realty” showing that this word
means “real estate.”11 Thus, the word REALTY in applicant’s
mark does not serve to distinguish his mark from opposer’s;
purchasers and prospective purchasers will view the word
UNITED in his mark as the portion with source-indicating
significance. Accordingly, the marks UNITED and UNITED
REALTY, when considered in their entireties, are virtually
identical in appearance, pronunciation, connotation and
commercial impression. This du Pont factor favors a finding
of likelihood of confusion.

11 See, for example, Webster’s New World College Dictionary, 3d
ed. © 1996.

Opposition No. 91122373
11
The next du Pont factor is the similarity of the
services. Applicant has admitted that his identified
franchising services and real estate brokerage services are
related. Request for Admission No. 12 (Opposer’s exhibit
No. 63). Further, applicant has admitted that “applicant’s
agreements with REALTY UNITED real estate brokerage
franchises include the right for the real estate brokerage
franchises to use the mark REALTY UNITED in connection with
their real estate brokerage services.” Request for
Admission No. 10 (Opposer’s exhibit No. 62). Moreover, the
record shows that independently owned real estate brokerage
offices may become franchisees of real estate brokerage
companies, so that they can take advantage of the more
national marketing tools that a larger company can offer,
including referrals from customers who are seeking to obtain
a property in a particular location. Opposer, in fact,
advertises its franchising services to real estate brokerage
offices in the same catalogs in which it offers its real
estate brokerage services. Opposer’s witness has testified
that brokerage services and franchising services are
interconnected, in that real estate brokerage services are
used by franchisees, and those same brokerage services are
used to market the franchise system. The foregoing evidence
and admissions are sufficient to demonstrate the relatedness
Opposition No. 91122373
12
of applicant’s franchising services and opposer’s real
estate brokerage services.
However, in addition to the similarity of opposer’s
real estate brokerage services, which are the subject of its
registration for UNITED, and applicant’s identified
franchising services for the operation of real estate
brokerage businesses, the evidence also shows that opposer
renders franchising services under the mark UNITED. In
particular, Exhibit 15 to the Francis deposition prominently
features UNITED as a trademark as part of an advertisement
seeking franchisees. Thus, applicant’s services are not
only closely related to opposer’s real estate brokerage
services, but they are legally identical to opposer’s
franchising services. The factor of the similarity of the
services favors a finding of likelihood of confusion.
The third du Pont factor is the similarity of channels
of trade. Since both opposer’s and applicant’s franchising
services may be offered to real estate brokerage businesses,
the channels of trade must be deemed to be the same.
Further, real estate brokerage businesses, the consumers of
applicant’s franchising services, would, because they are in
the business, be exposed to opposer’s real estate brokerage
services. This factor, too, favors opposer.
Opposer has identified only the above three factors as
being relevant to our decision of the issue of likelihood of
Opposition No. 91122373
13
confusion. To the extent that other du Pont factors are
applicable, we find that they are either neutral or that
they favor a finding of likelihood of confusion. For
example, there is no evidence of any third-party use of
UNITED marks. On the contrary, opposer has submitted
evidence that it has obtained judgments enjoining the use of
UNITED for real estate brokerage services. See United
National Real Estate, Inc. v. Elwood R. Morgan, Civ. Action
No. 89-5421 (ED Pa Nov. 28, 1990); United National Real
Estate, Inc. v. Andisch, Inc. et al, Civ. Action No. 88-C-
539 (D Col June 30, 1988); and First Horizon Corp. v. Tim
Singleton et al, Civ. Action No. 1:96CV000011LMB (Sept. 18,
1996). There is also no evidence of actual confusion, but
there is no evidence that applicant has obtained any
franchisees, nor can we determine whether applicant has
actually advertised or marketed his franchising services, or
if he has, to what extent. Therefore, we cannot conclude
that there has been sufficient use or advertising of
applicant’s mark for such services that, if confusion were
likely to occur, it would have occurred.
We recognize that the relevant class of purchasers for
franchising services in the field of real estate would be
real estate brokers, and that such purchasers would be more
sophisticated and careful than the general public. However,
given that applicant’s franchising services and opposer’s
Opposition No. 91122373
14
franchising services are legally identical, and the marks
are virtually identical, in that the additional word REALTY
in applicant’s mark has no source-indicating significance,
even sophisticated and careful purchasers are likely to be
confused. As for opposer’s real estate brokerage services,
given the close relationship between such services and
franchising services in the field of real estate brokerage,
sophisticated and careful purchasers are likely to believe
that there is a connection as to source between these
services if they are offered under such similar marks.
After considering all the du Pont factors on which
there is evidence, we find that applicant’s use of UNITED
REALTY for “franchising services, namely, rendering
technical assistance to others in the establishment and or
operation of real estate brokerage businesses and associated
services” is likely to cause confusion with opposer’s mark
UNITED for real estate brokerage services and for
franchising services.
Decision: The opposition is sustained.