WindermereServices Co.

Trademark Trial and Appeal Board

May 31, 2001

No. 75615300 (T.T.A.B. May. 31, 2001)

5/31/01
Paper No. 12
JQ
UNITED STATES PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Windermere Services Company
________
Serial No. 75/615,300
_______
Patrick Michael Dwyer for applicant.
Susan Leslie DuBois, Trademark Examining Attorney, Law
Office 111 (Craig Taylor, Managing Attorney).
_______
Before Cissel, Quinn and Hohein, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Windermere Services
Company to register the mark shown below
for, as amended, “real property brokerage and property
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/615,300
2
management services.”1
The Trademark Examining Attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, when used in connection with applicant’s
services, so resembles the previously registered mark shown
below
(“MORTGAGE” disclaimed) for “real estate financing and
mortgage loan services to commercial and residential
customers”2 as to be likely to cause confusion.
When the refusal was made final, applicant appealed.
Applicant and the Examining Attorney filed briefs.3 An oral
hearing was not requested.
1 Application Serial No. 75/615,300, filed January 4, 1999,
alleging dates of first use of October 21, 1990. The original
recitation of services included “mortgage loan origination and
mortgage lending services,” but these services were deleted from
the application after the Section 2(d) refusal was made.
Applicant’s attention is directed to the Board’s order dated
November 8, 2000 (footnote 1) regarding applicant’s true and
correct corporate name. In the event that applicant ultimately
prevails in any appeal filed, the appropriate documents should be
recorded in the Assignment Branch of the Office so that a
registration would issue in the correct name.
2 Registration No. 1,523,768, issued February 7, 1989; combined
Sections 8 and 15 affidavit filed.
3 For the reason set forth by applicant, its request to accept
the reply brief as timely filed is granted. The reply brief has
been considered in reaching our decision.
Ser No. 75/615,300
3
The Examining Attorney maintains that that the
dominant portion of the cited mark is the term “PREMIER,”
which is identical to applicant’s mark. In addition, the
design features of the marks, according to the Examining
Attorney, are not sufficient to distinguish the marks.
Thus, the Examining Attorney contends that the marks in
their entireties are similar. As to the services, the
Examining Attorney asserts that real property brokerage and
management services are related to mortgage financing
services. In connection with this assertion, the Examining
Attorney submitted excerpts retrieved from the NEXIS
database showing that the same entities offer both of the
types of services involved herein.
Applicant argues that the Examining Attorney has
failed to meet the required burden of proof in that no
evidence has been offered in support of the refusal. While
acknowledging that both marks contain the word “premier,”
applicant contends that the marks are otherwise dissimilar
in their entireties, pointing to alleged differences in
sound, appearance and meaning. Applicant also states that
the services are not similar, and that the services require
“careful, sophisticated purchasing analysis and decisions
by relatively mature buyers.” (brief, p. 14) Applicant
further alleges that there has been no actual confusion
Ser No. 75/615,300
4
between the two marks over a period spanning at least five
years.4
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence that are relevant
to the factors bearing on the likelihood of confusion
issue. In re E. I. du Pont de Nemours & Co., 476 F.2d
1357, 177 USPQ 563 (CCPA 1973). In any likelihood of
confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the services. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
We first turn to consider the marks. Applicant’s
mark, PREMIER in stylized script, and registrant’s mark,
PREMIER MORTGAGE and design, are similar in sound and
appearance. Further, the marks are similar in meaning,
both being laudatorily suggestive of superiority.5 In
comparing the marks, the term “PREMIER” clearly is the
4 Applicant also alleges that the cited mark is no longer in use.
(brief, pp. 14-15). The present ex parte proceeding is not the
proper forum for such a challenge. These allegations constitute
an impermissible collateral attack on the validity of the cited
registration and must be disregarded. See: In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1534-35 (Fed.
Cir. 1997). Accordingly, no consideration has been given to
them.
5 In this connection, we take judicial notice of the dictionary
definition of the term “premier:” “first in position, rank or
importance.” Webster’s Third New International Dictionary
(unabridged ed. 1993).
Ser No. 75/615,300
5
dominant portion of registrant’s mark. This portion is
identical to the entirety of applicant’s mark. The term
“PREMIER” would be the portion most likely to be remembered
by consumers and used by them in calling for the services.
See: In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB
1987). Although we have considered the marks in their
entireties, “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 [that] the ultimate
conclusion rests on consideration of the marks in their
entireties.” In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985). For example, “that a
particular feature is descriptive or generic with respect
to the involved goods or services is one commonly accepted
rationale for giving less weight to a portion of a mark...”
Id. at 751.
In the present case, the term “MORTGAGE” in
registrant’s mark is generic as used in connection with
mortgage loan services. Although we have considered this
disclaimed portion in comparing the marks, this generic
term does not distinguish the marks in any meaningful way.
Further, the stylization of applicant’s mark and the design
features of registrant’s mark do not sufficiently
distinguish the marks. In addition, despite the
Ser No. 75/615,300
6
suggestiveness of the term “premier,” the record is devoid
of evidence of any third-party uses or registrations of the
same or similar marks for similar types of services to
those involved herein.
In sum, the general overall commercial impressions
engendered by the marks are quite similar. It is the
general overall commercial impressions engendered by the
marks that must determine, due to the fallibility of memory
and the consequent lack of perfect recall, whether
confusion as to source or sponsorship is likely. In re
United States Distributors, Inc., 229 USPQ 237, 239 (TTAB
1986).
With respect to the similarity between applicant’s
“real property brokerage and property management services”
and registrant’s “real estate financing and mortgage loan
services to commercial and residential customers,” it is
not necessary that the services be identical or even
competitive in nature in order to support a finding of
likelihood of confusion. It is sufficient that the
circumstances surrounding their marketing are such that
they would be likely to be encountered by the same persons
under circumstances that would give rise, because of the
marks used in connection therewith, to the mistaken belief
that the services originate from or are in some way
Ser No. 75/615,300
7
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
Applicant, although arguing that the services are
different (but also acknowledging, however, that the
services are “sometimes offered in the same channels of
trade” (reply brief, 3, n. 3)), has offered no evidence in
support thereof. Indeed, the NEXIS excerpts relied upon by
the Examining Attorney show that there are numerous
entities that render real property brokerage and property
management services as well as real estate financing and
mortgage loan services. We find that applicant’s and
registrant’s services are highly related and complementary,
and would be offered in the same channels of trade to the
same classes of purchasers. See: Century 21 Real Estate
Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992)[registrant renders real estate
brokerage and mortgage brokerage services]; Freedom Savings
and Loan Association v. Way, 757 F.2d 1176, 226 USPQ 123
(11th Cir. 1985)[real estate sales and real estate finance
are highly complementary services]; and In re United
California Brokers, Inc., 222 USPQ 361 (TTAB
1984)[applicant offers brokerage services in field of real
estate and mortgages and loans].
Ser No. 75/615,300
8
We acknowledge that services of the type rendered by
applicant and registrant may involve careful and
discriminating purchases. Nonetheless, real estate
brokerage services and real estate financing services are
offered to a wide range of consumers, many of whom are not
likely to be sophisticated in the buying and financing of
real estate, much less capable of distinguishing between
the sources of these related services rendered under these
two similar marks.
Lastly, contrary to the gist of one of applicant’s
arguments, to the extent that any of the points argued by
applicant cast doubt on our ultimate conclusion on the
issue of likelihood of confusion, we resolve that doubt, as
we must, in favor of the prior registrant. In re Hyper
Shoppes (Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025 (Fed.
Cir. 1988); and In re Martin’s Famous Pastry Shoppe, Inc.,
748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984).
We conclude that consumers familiar with registrant’s
real estate financing and mortgage loan services rendered
under the mark PREMIER MORTGAGE and design would be likely
to believe, upon encountering applicant’s mark PREMIER in
stylized script for real estate brokerage and property
management services, that the services originated with or
Ser No. 75/615,300
9
were somehow associated with or sponsored by the same
entity.
Decision: The refusal to register is affirmed.