VacationFutures Inc.

Trademark Trial and Appeal Board

Aug 22, 2016

No. 86634983 (T.T.A.B. Aug. 22, 2016)

This Opinion is not a
Precedent of the TTAB

Mailed: August 22, 2016

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re VacationFutures Inc.
_____

Serial No. 86634983
_____

Matthew H. Swyers of The Trademark Company PLLC,
for VacationFutures Inc.
Seth A. Rappaport, Trademark Examining Attorney, Law Office 104,
Dayna Browne, Managing Attorney.
_____

Before Quinn, Kuczma and Lynch,
Administrative Trademark Judges.

Opinion by Kuczma, Administrative Trademark Judge:
VacationFutures Inc (“Applicant”) seeks registration on the Principal Register of
the mark RENTED.COM (in standard characters) for:
Computer services, namely, providing search platforms to
allow users to request content from and receive content to
a computer or mobile device in relation to real estate in
International Class 42.1

1 Application Serial No. 86634983 was filed on May 19, 2015, based upon Applicant’s
allegation of a bona fide intention to use the mark in commerce under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b).
Serial No. 86634983
- 2 -
The Trademark Examining Attorney refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), in view of the following
three registrations owned by Rentpath, LLC:
Registration No. Register Mark Services
28570332 Supplemental RENT.COM Providing a web site guide
at which owners and
managers of residential real
property promote their
properties to prospective
renters (International Class
35);
Providing text and
photographic information
over the Internet
concerning the availability,
price, location and
description of residential
real property of others to
prospective renters (Class
36)
43160463 Principal

Providing a real estate
website which allows
owners and managers of
residential real property to
promote their housing and
apartment properties
through offering prospective
tenants video walk
throughs, property
descriptions, text, price,
location, maps and other
information that would be
influential to a prospective
tenant in making a rental
decision (Class 35); and

2 Registered June 22, 2004; renewed.
3 Registered April 9, 2013. The mark consists of a stylized depiction of a house with a shadow
behind it and the wording “RENT.COM” presented in stylized font. The house is situated
above “.COM”. “RENT.COM” is disclaimed.
Serial No. 86634983
- 3 -
Providing real estate rental
information online, namely,
providing text and
photographic information
over the Internet
concerning the availability,
price, location and
description of residential
real property of others to
prospective renters;
Providing an on-line
searchable interactive
website featuring
information in the field of
real estate, namely,
providing a website where
prospective renters search
for residential real property
to rent; Providing a website
with real estate rental
listings where users may
post or respond to
Serial No. 86634983
- 4 -
advertisements seeking
roommates attached to
those listings (Class 36)
43412264 Principal Providing real estate rental
information online, namely,
providing text and
photographic information
over the Internet
concerning the availability,
price, location and
description of residential
real property of others to
prospective renters;
Providing an on-line
searchable interactive
website featuring
information in the field of
real estate, namely,
providing a website where
prospective renters search
for residential real property
to rent; Providing a website
with real estate rental
listings where users may
post or respond to
advertisements seeking
roommates attached to
those listings (Class 36);
Providing on-line electronic
bulletin boards for
transmission of messages
among computer users
concerning residential real
property to rent in Class 38;

4 Registration 4341226 issued on May 28, 2013. The mark consists of a stylized depiction of
a house with a shadow behind it. To the right of the design is the wording “RENT.COM”
presented in stylized font. “RENT.COM” is disclaimed.
Serial No. 86634983
- 5 -
computer services in the
nature of customized web
pages featuring user-
defined information (Class
42)

Additionally, registration of Applicant’s mark was refused under § 2(e)(1) of the
Trademark Act, 15 U.S.C. § 1052(e)(1), on the ground that the mark is merely
descriptive of the identified services.
After the Trademark Examining Attorney made the refusals final, Applicant
appealed to this Board. For the reasons set forth below, we affirm the refusals to
register.
I. Preliminary Matter
Applicant’s Brief did not address the § 2(e)(1) refusal, which was addressed by the
Trademark Examining Attorney. Applicant argued only against the refusal based on
likelihood of confusion under § 2(d). Nor did Applicant file a reply brief, despite the
fact that the Examining Attorney’s brief addressed the refusals under both §§ 2(d)
and 2(e)(1). However, it is still the USPTO’s burden to show that registration should
be refused pursuant to §2(e)(1). See In re Chengdu AOBI Info. Tech. Co., 111 USPQ2d
2080, 2082 (TTAB 2011).
Serial No. 86634983
- 6 -
II. Likelihood of Confusion Under § 2(d)
Our determination under § 2(d) of the Trademark Act is based on an analysis of
all 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 Co., Inc., 315 F.3d
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis,
two key considerations are the similarities between the marks and the similarities
between the services at issue. See Federated Foods, Inc. v. Fort Howard Paper Co.,
544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). We carefully considered all of the
evidence of record and arguments as they pertain to the relevant du Pont factors
(including any evidence and arguments not specifically discussed in this opinion). To
the extent that any other du Pont factors for which no evidence or argument were
presented may nonetheless be applicable, we treat them as neutral.
A. Similarity of the Marks
It is well settled that marks are compared in their entireties for similarities in
appearance, sound, connotation, and commercial impression. Stone Lion Capital
Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1160 (Fed. Cir.
2014) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F. 3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir. 2005)). “Similarity in any one
of these elements may be sufficient to find the marks confusingly similar.” In re
Davia, 110 USPQ2d 1810, 1812 (TTAB 2014) (citing In re 1st USA Realty Prof’ls, Inc.,
Serial No. 86634983
- 7 -
84 USPQ2d 1581, 1586 (TTAB 2007)); In re White Swan Ltd., 8 USPQ2d 1534, 1535
(TTAB 1988).
Applicant’s mark is RENTED.COM while Registrant’s marks either consist
entirely of the wording RENT.COM, or the dominant word portion of the mark is
RENT.COM. The Examining Attorney submitted the definition of “rented” as “used
by someone who pays rent to the owner”5 to support the close relationship in meaning
between “rent” and “rented.” Thus, Applicant’s mark is highly similar to Registrant’s
mark or to the dominant portion of Registrant’s marks, with respect to sound,
appearance and commercial impression.
Marks may be confusingly similar in appearance where similar terms or phrases
or similar parts of terms or phrases appear in the compared marks and create a
similar overall commercial impression. See Crocker Nat’l Bank v. Canadian Imperial
Bank of Commerce, 228 USPQ 689, 690-91 (TTAB 1986), aff’d sub nom. Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, Nat’l Ass’n, 811 F.2d 1490, 1
USPQ2d 1813, 1817 (Fed. Cir. 1987) (finding COMMCASH and COMMUNICASH
confusingly similar); In re Corning Glass Works, 229 USPQ 65, 66 (TTAB 1985)
(finding CONFIRM and CONFIRMCELLS confusingly similar); American Optical
Corp. v. Siemens Aktiengesellschaft, 213 USPQ 510 (TTAB 1982) (AOT for medical X-
ray machinery held likely to be confused with AO for heart-lung machines, oxygen
exchange equipment, catheters, cardiac resuscitation instruments and the like).

5 See Office Action of 9/1/2015, p. 50, MacMillan Dictionary, http://www.macmillan
dictionary.com/dictionary/american/rented#rented_3.
Serial No. 86634983
- 8 -
For Registrant’s composite marks containing both words and a design, the
“RENT.COM” word portion may be considered the dominant and most significant
feature of the marks because it is more likely to be impressed upon a purchaser’s
memory and to be used when requesting the services. Joel Gott Wines, LLC v.
Rehoboth Von Gott, Inc., 107 USPQ2d 1424, 1431 (TTAB 2013) (citing In re Dakin’s
Miniatures, Inc., 59 USPQ2d 1593, 1596 (TTAB 1999)); see In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1908, 1911 (Fed. Cir. 2012) (citing CBS Inc. v. Morrow, 708
F. 2d 1579, 218 USPQ 198, 200 (Fed. Cir. 1983)). Thus, although Applicant’s and
Registrant’s marks must be compared in their entireties, the word portion is often
considered the dominant feature and is accorded greater weight in determining
whether marks are confusingly similar, even where, as in this case, the word portions
of Registrant’s Principal registrations have been disclaimed. In re Viterra Inc., 101
USPQ2d at 1911 (citing Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565,
218 USPQ2d 390, 395 (Fed. Cir. 1983)). In addition, in the ultimate determination of
similarity of the marks, the Board must consider the RENT.COM marks in their
entireties, including the disclaimed portion. See In re Viterra Inc., 101 USPQ2d at
1911 citing Giant Food, 218 USPQ at 395 (“[I]t is well settled that the disclaimed
material still forms a part of the mark and cannot be ignored in determining
likelihood of confusion.”).
Furthermore, the wording “rent” is the first syllable in Applicant’s mark and is
the first word in Registrant’s marks. Consumers are generally more inclined to focus
on the first word, prefix, or syllable in any trademark or service mark. See Palm Bay
Serial No. 86634983
- 9 -
Imps., Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 73 USPQ2d at 1692;
Presto Prods., Inc. v. Nice-Pak Prods., 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” when making purchasing decisions). This is especially
so when the second syllable in Applicant’s marks is merely “-ed,” indicating the past
tense of the shared word “rent” in the marks.
Additionally, the rest of Applicant’s mark consists of the non-source identifying
generic top-level (gTLD) domain “.com” which is also found at the end of Registrant’s
marks. The inclusion of “.COM” located at the end of both Applicant’s mark and
Registrant’s marks contributes to the similar look and sound of the marks.
Applicant contends that Applicant’s mark and Registrant’s marks are not
confusingly similar because they differ in appearance, noting that two of Registrant’s
marks contain stylization and design elements that distinguish them from
Applicant’s mark. However, Applicant’s mark is in standard character form. A mark
in standard characters may be displayed in any lettering style; the rights reside in
the wording or other literal element and not in any particular display or rendition.
See In re Viterra Inc., 101 USPQ2d at 1909; In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1260 (Fed. Cir. 2010). Thus, Applicant would have the right to use its
mark in any stylization, including stylization that is identical or similar to the
stylization utilized in Registrant’s marks. As to the house designs set forth in
Registration Nos. 4,316,046 and 4,341,226 owned by Registrant, they merely
Serial No. 86634983
- 10 -
reinforce the rental of residential real property services offered by Registrant, and
thus do not distinguish the marks from Applicant’s.
Applicant also argues that a likelihood of confusion does not exist in this case
because Registrant’s marks are weak. However, marks deemed “weak” or merely
descriptive are still entitled to protection against the registration by a subsequent
user of a similar mark for closely related goods and/or services. See In re Colonial
Stores, Inc., 216 USPQ 793, 795 (TTAB 1982) (“even weak marks are entitled to
protection against registration of similar marks”). This protection extends to
Registrant’s mark that is registered on the Supplemental Register. See, e.g., In re
Clorox Co., 578 F.2d 305, 198 USPQ 337, 340 (CCPA 1978); In re Hunke & Jochheim,
185 USPQ 188, 189 (TTAB 1975).
When comparing marks, the test is not whether the marks can be distinguished
in a side-by-side comparison, but rather whether the marks are sufficiently similar
in terms of their overall commercial impression that confusion as to the source of the
services offered under the respective marks is likely to result. Midwestern Pet Foods,
Inc. v. Societe des Produits Nestle S.A., 685 F.3d 1046, 103 USPQ2d 1435, 1440 (Fed.
Cir. 2012); In re Davia, 110 USPQ2d at 1813. The proper focus is on the recollection
of the average purchaser, who retains a general rather than specific impression of
trademarks. United Global Media Grp., Inc. v. Tseng, 112 USPQ2d 1039, 1049 (TTAB
2014); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012).
Serial No. 86634983
- 11 -
Considering all of the above, the marks are sufficiently similar to cause a
likelihood of confusion under § 2(d) of the Trademark Act if the same or similar
services are rendered thereunder.
B. Similarity of Services
We turn now to the du Pont factor involving the relatedness of the parties’ services
and keep in mind that it is not necessary that the respective services be similar or
competitive to support a holding of likelihood of confusion. It is sufficient that the
respective services are related in some manner, or that the circumstances
surrounding their marketing of the services are such that they would be likely to be
encountered by the same persons under circumstances that could, because of the
similarity of the marks, give rise to the mistaken belief that they originated from the
same producer. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223
USPQ 1289 (Fed. Cir. 1984); In re Davia, 110 USPQ2d at 1816-17; In re Accelerate
s.a.l., 101 USPQ2d 2047, 2050 (TTAB 2012); In re Melville Corp., 18 USPQ2d 1386,
1388 (TTAB 1991); In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
The evidence submitted by the Examining Attorney consisting of websites of
entities that provide the types of services offered by Applicant and Registrant
establish that the same entity commonly markets and provides the relevant services
under the same mark, and that the relevant services are sold or provided through the
same trade channels and to the same classes of consumers in the same fields of use:
• Zillow provides search platforms allowing users to request content from
and receive content in relation to real estate. Zillow also provides a real
estate website which allows owners and managers of residential real
Serial No. 86634983
- 12 -
property to promote their housing and apartment properties and an
online searchable interactive website featuring information in the field
of real estate, where prospective renters search for residential real
property to rent. (Office Action of 09/01/2015, pp. 16-28)
• Realtor.com provides search platforms allowing users to request content
from and receive content in relation to real estate while also providing
the Registrant’s services in the nature of a real estate website that
allows users to search for information about real estate and find
information about real estate. Realtor.com also promotes housing and
apartment properties for sale and for rent. (Office Action of 09/01/2015,
pp. 29-32)
• PropertyShark.com provides a search platform allowing users to search
for property information, property maps, property values, and property
photos for commercial and residential real estate properties. (Office
Action of 09/01/2015, pp. 33-35; Final Office Action of 11/06/2015, pp. 60-
62)
• Trulia provides a search platform that allows users to search for
property information, property maps, property values, and property
photos for residential real estate properties. Trulia also promotes
housing and apartment properties for sale and for rent. (Final Office
Action of 11/06/2015, pp. 21-27)
• HomeFinder.com provides search platforms to allow users to request
content from and receive content in relation to real estate while also
providing the registrant’s services in the nature of a real estate website
that allows users to search for information about real estate and find
information about real estate. Realtor.com also promotes housing and
apartment properties for sale and for rent. (Office Action of 09/01/2015,
pp. 44-46; Final Office Action of 11/06/2015, pp. 21-23)
Evidence obtained from the Internet may be used to support a determination under
§ 2(d) that the services are related. See, e.g., In re Paper Doll Promotions, Inc., 84
USPQ2d 1660, 1668 (TTAB 2007). Thus, we find Applicant’s and Registrant’s services
related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd., 92
USPQ2d 1198, 1202-03 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d
1266, 1271-72 (TTAB 2009).
Serial No. 86634983
- 13 -
Further, generally, the greater degree of similarity between the applied-for mark
and the registered mark, the lesser the degree of similarity between the services of
the respective parties that is required to support a finding of likelihood of confusion.
In re Davey Prods. Pty Ltd., 92 USPQ2d at 1202; In re Thor Tech, Inc., 90 USPQ2d
1634, 1636 (TTAB 2009). Therefore, with the contemporaneous use of highly similar
marks, consumers are likely to conclude that the services are related and originate
from the same source.
Upon consideration of this factor, we find that Applicant’s use of RENTED.COM
for “providing search platforms to allow users to request content from and receive
content to a computer or mobile device in relation to real estate” is likely to cause
confusion with Registrant’s RENT.COM marks for “… providing text and
photographic information over the Internet concerning the availability, price, location
and description of residential real property of others to prospective renters; …
providing a website where prospective renters search for residential real property to
rent.”
III. Descriptiveness Under § 2(e)(1)
Matter that “merely describes” the services on or in connection with which it is
used is not registrable on the Principal Register. A mark is considered merely
descriptive if it describes an ingredient, quality, characteristic, function, feature,
purpose or use of the specified goods or services. See In re Gyulay, 820 F.2d 1216, 3
USPQ2d 1009 (Fed. Cir. 1987) (APPLE PIE held merely descriptive of potpourri); In
re Bed & Breakfast Registry, 791 F.2d 157, 229 USPQ 818 (Fed. Cir. 1986) (BED &
Serial No. 86634983
- 14 -
BREAKFAST REGISTRY held merely descriptive of lodging reservations services);
In re Fat Boys Water Sports LLC, 118 USPQ2d 1511, 1514 (TTAB 2016)
(HOUSEBOAT BLOB descriptive of inflatable float mattresses and pads for
recreational use).
Additionally, it is not necessary that a term describe all of the purposes, functions,
characteristics or features of a service to be considered merely descriptive; it is
enough if the term describes one significant function, attribute or property of the
services. See In re Chamber of Commerce of the United States of America, 675 F.3d
1297, 102 USPQ2d 1217, 1219 (Fed. Cir. 2012); In re Oppedahl & Larson LLP, 373
F.3d 1171, 71 USPQ2d 1370, 1371 (Fed. Cir. 2004) (“A mark may be merely
descriptive even if it does not describe the ‘full scope and extent’ of the applicant’s
goods or services,” citing In re Dial-A-Mattress Operating Corp., 240 F.3d 1341, 57
USPQ2d 1807, 1812 (Fed. Cir. 2001)); In re Datapipe, Inc., 111 USPQ2d 1330, 1332
(TTAB 2014); In re ICE Futures U.S. Inc., 85 USPQ2d 1664, 1665 (TTAB 2008).
The Examining Attorney submitted Internet evidence from various websites6
showing that the terms “rent,” “rental” or “rented,” are commonly used by entities
providing services identical or similar to Applicant’s services to describe to consumers
that the services feature information about rented real estate properties or real estate
properties that are available for rent, including:
• Realtor.com uses the heading RENTAL PROPERTIES to describe the types
of properties that users can search for using their search platform. (Final
Office Action of 11/06/2015, pp. 66-68)

6 See Office Action of 9/1/2015 and Final Action of 11/6/2015.
Serial No. 86634983
- 15 -
• Rentals.com provides a website where users can search for rental
properties. The website states that Rentals.com is “[y]our online source for
rental homes, apartments and houses for rent!” The website also states that
“Rentals.com makes it quick and easy for tenants to search for rental
homes.” (Final Office Action of 11/06/2015, pp. 69-72)

• MyNewPlace uses the heading HOMES FOR RENT to describe the types of
properties that users can find using their search platform. (Final Office
Action of 11/06/2015, pp. 73-74)

• Homes.com uses the heading SEARCH HOUSES FOR RENT IN
MARYLAND to describe the function or feature of the search platform on
their website. (Final Office Action of 11/06/2015, pp. 82-83)

Applicant’s services provide search platforms that allow users to request content
from and receive through a computer or mobile device content in relation to real
estate properties that have been rented or are available for rent. Thus, Applicant’s
applied-for mark is merely descriptive of the identified services.
As to the generic top-level domain (gTLD) “.COM” contained in the mark, the non-
source identifying gTLD “.com” merely indicates an internet address for use by
commercial, for-profit organizations. See, e.g., In re 1800Matterss.com IP LLC, 586
F.3d 1359, 92 USPQ2d 1682, 1685 (Fed. Cir. 2009); In re Hotels.com, L.P., 573 F.3d
1300, 91 USPQ2d 1532, 1535 (Fed. Cir. 2009). As a general rule, the addition of a
gTLD to otherwise unregistrable wording (i.e., merely descriptive or generic) does not
add source-indicating significance except in “unique” or “exceptional” circumstances.
In re Oppedahl & Larson LLP, 373 F.3d 1171, 71 USPQ2d 1370, 1372-74 (Fed. Cir.
2004). While the attachment of a gTLD to the other descriptive portion of a mark
could enhance the prospects of registrability for the mark as a whole, as in for
example, TENNIS.NET, which produces a witty double entendre relating to tennis
Serial No. 86634983
- 16 -
nets, gTLDs will most often not add any source-identifying function to a mark. In re
Oppedahl & Larson, 71 USPQ2d at 1373. Thus, adding “.com” to an otherwise
unregistrable mark typically does not render the mark registrable. See In re
Oppedahl & Larson LLP, 71 USPQ2d 1374; In re Steelbuilding.com, 415 F.3d 1293,
75 UPSQ2d 1420, 1422 (Fed. Cir. 2005) (“Only in rare instances will the addition of
a [g]TLD indicator to a descriptive term operate to create a distinctive mark.”).
Here, no such exceptional circumstances exist. The “RENTED” portion of the
applied-for mark is unregistrable by itself, and the addition of the “.COM” gTLD does
not create a witty double entendre or add any other significance capable of identifying
source or acquiring distinctiveness. Thus, when they are combined, the wording and
the gTLD retain their usual meanings. If each component retains its descriptive
significance in relation to the services, the combination results in a composite that is
itself descriptive. See, e.g., In re Petroglyph Games Inc., 91 USPQ2d 1332, 1341 (TTAB
2009) (BATTLECAM merely descriptive for computer game software); In re Putman
Publ’g Co., 39 USPQ2d 2021, 2022 (TTAB 1996) (FOOD & BEVERAGE ON-LINE
merely descriptive of a news and information service for the food processing industry).

Decision: The refusals to register Applicant’s mark RENTED.COM under
Sections 2(d) and 2(e)(1) of the Trademark Act are affirmed.