1st USA Realty Profession-als, Inc.

Trademark Trial and Appeal Board

Aug 7, 2007

No. 78553715 (T.T.A.B. Aug. 7, 2007)

Mailed:
August 7, 20007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re 1st USA Realty Professionals, Inc.
________

Serial No. 78553715
_______

Renee L. Mitchell and Jessica A. Benford of Ryley Carlock &
Applewhite for 1st USA Realty Professionals, Inc.

Dominick Salemi, Trademark Examining Attorney, Law Office
106 (Mary I. Sparrow, Managing Attorney)
_______

Before Seeherman, Walters and Bucher, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

1st USA Realty Professionals, Inc. has appealed from
the final refusal of the Trademark Examining Attorney to
register the mark 1st USA and design, as shown below, with
THIS OPINION IS A
PRECEDENT OF THE TTAB
Ser No. 78553715
2
USA disclaimed, for real estate brokerage and listing
services.1

Applicant has provided the following description of the
mark:
The mark consists of a multiple star
design. The stars increase in size as
they progress from the background to
the foreground. The largest star
appears directly behind the words ‘1st
USA’.

Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. §1052(d), on the ground
that applicant’s mark, as used in connection with
applicant’s identified services, so resembles the mark
FIRST USA in stylized form, as shown below, with the word
USA disclaimed, previously registered for “banking and
credit card services, credit card processing services,
travellers’ check issuance, insurance underwriting
services, and financial investment services in the field of

1 Application Serial No. 78553715, filed January 25, 2005,
asserting first use and first use in commerce as of October 1,
2004.
Ser No. 78553715
3
securities,”2 that it is likely to cause confusion or
mistake or to deceive.

The appeal has been fully briefed.

We first address some evidentiary points. With its
appeal brief applicant has submitted a copy of a
registration for another 1st U.S.A. mark which it asserts
it owns. Normally such evidence would be viewed as
untimely and would not be considered. See Trademark Rule
2.142(d), which provides that the record in the application
should be complete as of the filing of the appeal.
However, applicant has referenced this registration in
connection with its argument of lack of actual confusion,
in each of its filings, beginning with its response to the
first Office action. Further, the Examining Attorney has
addressed applicant’s argument regarding the lack of any
evidence of actual confusion in both his denial of the
request for reconsideration and in his appeal brief.
Although he has not specifically referred to applicant’s
prior registration, a fair reading of his statements is

2 Registration No. 1700818, issued July 14, 1992; Section 8 & 15
affidavits, respectively, accepted and acknowledged; renewed.
Ser No. 78553715
4
that he has considered it because it is the main point of
applicant’s argument.3 Accordingly, we deem the Examining
Attorney to have treated this registration as being of
record, and we have therefore considered it.
With its response to the first Office action applicant
listed the particulars of three third-party
applications/registrations. This is not the proper way to
make such applications and registrations of record. See In
re Volvo Cars of North America Inc., 46 USPQ2d 1455 (TTAB
1998). However, because the Examining Attorney did not
advise applicant that the listing was insufficient at a
point where applicant could have corrected the error, the
application and registrations are deemed to have been
stipulated into the record, to the extent that the specific
data provided by applicant has been considered. See TBMP
§1208.02. Applicant also submitted, with its request for
reconsideration, a listing of approximately 65 marks taken
from the USPTO TESS database for marks containing the words
“FIRST” or “1ST” or “USA.” This listing is, as noted,
insufficient to make the applications and registrations of
record. In re Ruffin Gaming LLC, 66 USPQ2d 1924, 1925 n.3
(TTAB 2002). Nor can we deem the Examining Attorney to

3 Needless to say, the Examining Attorney never raised any
objection with respect to consideration of the registration.
Ser No. 78553715
5
have waived any objection to this document by failing to
advise applicant of the insufficiency, since at the point
that applicant filed the list it no longer had an
opportunity to add to the record of the application.
Accordingly, this list has not been considered. We also
point out that, even if we were to consider the list, it
has no probative value since it does not show the goods or
services for which the marks were registered. (It appears
from the wording in the marks themselves that many are for
goods or services that have no relation to the services at
issue herein, e.g., FIRST CLASS ESPRESSO EXPERIENCE, 1ST
MEDICAL RESPONSE, FLOOR SAFETY USA.) In addition, almost
all of the listed marks are for applications, rather than
registrations. Third-party applications have no
evidentiary value other than to show that they were filed.
In re Juleigh Jeans Sportswear Inc., 24 USPQ2d 1694, 1699
(TTAB 1992).
With its reply brief applicant argues that the third-
party registrations made of record by the Examining
Attorney to show the relatedness of the services should not
be given any weight. To the extent that the registrations
are based on Section 44 or Section 66 of the Trademark Act,
applicant’s objection is well-taken. Because these
registrations are not based on use in commerce they have no
Ser No. 78553715
6
probative value in showing the relatedness of the services,
and they have not been considered. See In re Albert
Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993). Nor do we
find probative those third-party registrations which are
for services that are different from those identified in
the application and the cited registration. However, as
discussed infra, several of the registrations are based on
use in commerce and include the services that are
identified in both applicant’s application and the cited
registration. Those registrations have been considered,
and given appropriate evidentiary weight.
This brings us to the basis for refusal of applicant’s
registration, namely, whether use of applicant’s mark for
its identified services is likely to cause confusion with
the cited registration. Our determination of this issue 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 Co.,
Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
any likelihood of confusion analysis, two key
considerations are the similarities between the marks and
the similarities between the goods and/or services. See
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
Ser No. 78553715
7
1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
With respect to the services, applicant has discussed
the respective services by asserting that the registrant is
not likely to expand its services to those identified in
applicant’s application. The concept of expansion of trade
is generally addressed in the context of the issue of
priority in an inter partes proceeding. For example, when
an opposer has prior rights for certain services, but began
using its mark for the same services as the applicant after
the applicant did, we examine whether the applicant’s
services are within the natural scope of expansion of the
opposer’s original services to determine whether the
opposer’s priority with respect to the original services
will carry over to give it priority with respect to the
applicant’s services. See May Dep’t Stores Co. v. Prince,
200 USPQ 803, 808-09 (TTAB 1978), cited by applicant, in
which the Board stated that “as the first commercial user
of a black and white diagonal design which is arbitrary in
its concept and use, opposer possesses rights therein
sufficient to preclude the registration thereof by a
subsequent user of the same or a similar mark for any goods
which purchasers might reasonably be likely to assume
Ser No. 78553715
8
emanate from it in the normal expansion of its business
under the mark notwithstanding that the expansion to a
particular product might be subsequent in time to that of
another party.”
The expansion of trade doctrine has a more limited
application in an ex parte proceeding. In In re General
Motors Corporation, 196 USPQ 574 (TTAB 1977), the case
cited in Trademark Manual of Examining Procedure Section
1207.01(a)(v) which discusses the relatedness of goods and
services in terms of the expansion of trade doctrine, and
which section was cited by applicant in its brief, the
applicant therein argued that it was not within the normal
expansion of trade of a manufacturer of automotive shock
absorbers to manufacture automobiles. The Board, however,
analyzed the issue as being whether purchasers, when seeing
the identical mark applied to both automobiles and
automotive shock absorbers, would be likely to attribute a
common source or origin to such closely related goods. In
affirming the refusal of registration, the Board found that
consumers were likely to assume a common source for the
goods, and was not persuaded by the applicant’s argument
that the registrant was unlikely to expand its business of
making shock absorbers to also make automobiles.
Ser No. 78553715
9
Thus, we look at the question of the relatedness of
the services identified in applicant’s application and
those in the cited registration based on whether consumers
are likely to believe that the services emanate from a
single source, rather than whether the Examining Attorney
has shown that the registrant herein has or is likely to
expand its particular business to include the services of
applicant.4
With respect to the du Pont factor of the similarity
of the goods and/or services, the case law is clear that it
is not necessary that the goods or services of applicant
and the registrant be similar or competitive, or even that
they move in the same channels of trade to support a
holding of likelihood of confusion. It is sufficient that
the respective goods or services are such that they would
or could be encountered by the same persons under
circumstances that could, because of the similarity of the

4 We do not mean to suggest that the concept of an expansion of
trade has no applicability in the determination of likelihood of
confusion in an ex parte proceeding. However, that concept is
considered through a traditional relatedness of goods and
services approach. Obviously if there is evidence that third
parties offer both types of goods or services, that indicates
that an entity could expand its business to include both types of
goods or services. It is also evidence that the public would
believe that both types of goods or services emanate from a
single source. It is not necessary, however, in the context of
an ex parte proceeding, for the Office to show that the owner of
the particular registration that has been cited against the
application has expanded or will expand its goods or services.
Ser No. 78553715
10
marks, give rise to the mistaken belief that they originate
from the same producer. See In re International Telephone
& Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
In this case, the Examining Attorney has shown this
relatedness of the services by submitting a number of
third-party registrations which show that a single mark has
been adopted by various entities for both the services
identified in applicant’s application and those identified
in the cited registration. Third-party registrations which
individually cover a number of different items and which
are based on use in commerce serve to suggest that the
listed goods and/or services are of a type which may
emanate from a single source. See In re Infinity
Broadcasting Corporation, 60 USPQ2d 1214, 1217-1218 (TTAB
2001). These registrations include No. 2599438 for, inter
alia, banking services, credit card services and real
estate brokerage and management services; No. 2844824 for,
inter alia, banking services, credit card services and real
estate brokerage services; No. 2978625 for, inter alia,
insurance underwriting services and real estate brokerage
services; No. 2902461 for, inter alia, financial investment
in the field of securities, real estate brokerage and real
estate listing; No. 3068986 for, inter alia, banking
services and real estate brokerage services; and No.
Ser No. 78553715
11
2941982 for, inter alia, banking services and real estate
brokerage.5
Applicant has argued that the registrant’s and
applicant’s services are in separate, heavily regulated
industries. To the extent that applicant is asserting
(without any evidentiary support) that these services are
not rendered by the same entities, that assertion is belied
by the third-party registrations, which show that entities
have adopted a single mark for both types of services.
Applicant also argues that applicant is not a
financial institution, and does not provide financing
services, while the registrant, it asserts, provides
banking and credit card services that have nothing to do
with real estate listing and agent services, and the
registrant does not provide mortgage lending under the
cited mark. Applicant also asserts that because the cited

5 As noted previously, we have not considered those
registrations that were based on Section 44 or Section 66 of the
Trademark Act, or those registrations which are for services that
are different from those identified in the application and the
cited registration. We consider it poor examination practice to
submit a large number of third-party registrations without regard
to whether they have any probative value. Moreover, submitting a
large number of third-party registrations without highlighting
particularly relevant ones in the appeal brief is not helpful.
Here, the Examining Attorney has merely stated, in his brief,
that “Evidence supporting the relationship of banking and real
estate services was provided by attorney [sic] in the form of
numerous trademark registrations….” p. 5. Since the Examining
Attorney recognizes that he made of record numerous trademark
registrations, he should have pointed out which ones were most
Ser No. 78553715
12
registration identifies registrant’s services in detail, it
is clear that the registrant has no intention of providing
real estate brokerage or finance services.
The problem with applicant’s argument is that it is
based on applicant’s actual activities and what it asserts
are the registrant’s actual business practices. However,
the question of likelihood of confusion must be determined
based on an analysis of the mark as applied to the goods
and/or services recited in an applicant’s application vis-
à-vis the goods and/or services recited in the cited
registration, rather than what the evidence shows the goods
and/or services to be. See Canadian Imperial Bank of
Commerce v. Wells Fargo Bank, N.A., 811 F.2d 1490, 1 USPQ2d
1813 (Fed. Cir. 1987); In re William Hodges & Co., Inc.,
190 USPQ 47 (TTAB 1976).
The third-party registrations made of record show that
entities may adopt a single mark for the services
identified in both applicant’s application and the cited
registration. Accordingly, if consumers encounter these
services rendered under the same or a confusingly similar
mark, they are likely to believe that they emanate from the

probative, instead of submitting both probative and non-probative
registrations and leaving it to the Board to sort through them.
Ser No. 78553715
13
same source. The du Pont factor of the similarity of the
services favors a finding of likelihood of confusion.
The next du Pont factor we consider is that of the
channels of trade. Applicant argues, with respect to this
factor, that applicant and registrant “have customers with
different needs and employ different means of promotion to
increase visibility to potential customers.” Brief, p. 8.
Although we recognize that the services are different, as
we stated in our discussion of the relatedness of the
services, it is not necessary that the services be similar
or competitive. There is no question that both applicant’s
and the registrant’s identified services are marketed to
the general public. Nor can there be any doubt that
consumers who seek real estate brokerage services would
also be consumers of banking services and credit card
services. Thus, the services would be encountered by and
be rendered to the same consumers. Further, although there
is no direct evidence that the services are offered
together, the third-party registrations do show that they
may be rendered by the same entities.
Applicant also asserts that the services are promoted
through different means, stating that “real estate agents
often use signs on properties for sale, newspapers,
specialty mailers and Internet listings” while “credit card
Ser No. 78553715
14
companies tend to send offers to specific individuals,
advertise in print mediums or promote through television.”
Brief, p. 9. We point out that the cited registration is
not limited to services rendered by credit card companies,
but includes, inter alia, banking services and insurance
underwriting services. Applicant’s own statement
acknowledges an overlap in even the credit card services to
which applicant has limited its comments, i.e., both can be
advertised in newspapers and through direct mail. Real
estate brokerage services may also be advertised on
television, which applicant recognizes is a medium in which
credit card services are advertised. Banking services may
also be advertised in newspapers and on television. Thus,
the respective services may be promoted through some of the
same media.
Because applicant’s and the registrant’s identified
services can be rendered to the same consumers, this
du Pont factor somewhat favors a finding of likelihood of
confusion.
The next du Pont factor we consider is the similarity
of the marks. The registered mark is for the words FIRST
USA in a slightly stylized typestyle. However, the
stylization is so minimal that it does not make a real
commercial impression. Because of this, consumers will
Ser No. 78553715
15
view the mark as merely the words FIRST USA. Applicant’s
mark, which consists of the words 1st USA and a design, is
equivalent in its literal element to the registrant’s mark.
The symbol “1st” is readily understood as a numerical
representation of the word “FIRST.” Thus, the marks are
identical in pronunciation and connotation. Similarity in
sound alone may be sufficient for a finding of likelihood
of confusion. See Krim-Ko Corporation v. The Coca-Cola
Company, 390 F.2d 728, 156 USPQ 523 (CCPA 1968). This is
especially true in this case, where the application and
registration are for services which may be referred to or
recommended by word of mouth. See Miles Laboratories, Inc.
v. Whorton Pharmacal Company, 199 USPQ 758 (TTAB 1978).
Applicant’s mark differs in appearance from the
registered mark in that it contains a background of stars,
but we do not consider this design to be sufficient to
distinguish the marks. The stars are clearly background
material, with the words 1st USA being superimposed on the
stars design. Further, because a stars motif is often
associated with the United States, the stars design tends
to simply reinforce the component USA in applicant’s mark,
rather than having a separate connotation or making a
separate impression. If a mark comprises both a word and a
design, then the word is normally accorded greater weight
Ser No. 78553715
16
because it would be used by purchasers to request the goods
or services. In re Appetito Provisions Co., 3 USPQ2d 1553
(TTAB 1987). Although we must compare the marks in their
entireties, it is a well-established principle that, in
articulating reasons for reaching a conclusion on the issue
of likelihood 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. See In re
National Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).
We do not agree with applicant that the dominant
element of its mark is the star design because the word USA
has been disclaimed, and because both 1st and USA are weak
elements. Although USA has a geographic significance, and
1st and FIRST can have a laudatory significance, we cannot
conclude that the combination 1st USA/FIRST USA is weak.
Applicant has not made of record any evidence of third-
party uses of marks containing either the terms 1st USA or
FIRST USA, such that we could conclude that the public is
so used to seeing marks with 1st USA/FIRST USA that they
would look to other elements of the marks, such as
applicant’s stars design, in order to distinguish them. We
note that applicant did submit information about third-
party applications/registrations. However, third-party
Ser No. 78553715
17
applications and registrations are not evidence that the
marks shown therein are in use, or that the public is
familiar with them. More importantly, of the two
registrations and the single application for which
applicant submitted information, only Registration No.
2460823 contains the combination FIRST USA. This
registration, for FIRST USA CONNECTIONS, is owned by the
same entity which owns the cited registration.6 Although we
acknowledge that there is a suggestive connotation to 1st
USA or FIRST USA in the respective marks (the identical
suggestive connotation, we should add), the words still
make a stronger impact on consumers than the background
stars design in applicant’s mark. Consumers will remember
the words more than the background design because they will
refer to the mark by the words, i.e., consumers are more
likely to refer to applicant’s services as 1st USA rather
than as the real estate brokerage with the star design.

6 As noted previously, applicant submitted data regarding two
registrations and a pending application, rather than copies of
the documents themselves, but because the Examining Attorney did
not advise applicant of this insufficiency at a point that
applicant could have cured it, we have considered the
information. The second registration, No. 2434366 is for a
different mark, 1ST FINANCIAL BANK USA. The third mark
referenced by applicant is for a third-party application. Such
applications, as noted previously, are evidence only of the fact
that they have been filed; they cannot be used to show that a
term is descriptive or suggestive. The value of this principle
is made clear in the present case, because Office records show
that this application has been abandoned.
Ser No. 78553715
18
Accordingly, despite the fact that there are some
specific differences in the marks, overall they convey the
same commercial impression, and the similarities in
appearance caused by the identical dominant word elements
outweigh the differences due to the stylization of the
words and the presence of the design element in applicant’s
mark. The du Pont factor of the similarity of the marks
favors a finding of likelihood of confusion.
In reaching this conclusion, we have considered
applicant’s argument that its mark and the registrant’s
mark generally appear in different advertising media, e.g.,
applicant’s mark appears on signs located on real property
and in real estate listings, while the registrant’s mark
“appears on credit card statements and solicitations
received by consumers via the mail or a banking
institution.” Brief, p. 14.7 If anything, the fact that
the respective marks will not appear with each other
increases the likelihood of confusion, since consumers will
not have the opportunity of making side-by-side comparisons
between the marks, and must rely upon their imperfect

7 We point out that there is no evidence that these are the only
methods by which consumers will encounter the respective marks,
and, as noted above, advertisements for both services can appear,
inter alia, in television commercials and newspapers.

Ser No. 78553715
19
recollections. Dassler KG v. Roller Derby Skate
Corporation, 206 USPQ 255 (TTAB 1980).
We have also considered applicant’s argument that its
mark “is typically accompanied by the phrase, ‘Realty
Professionals Inc.’” Brief, p. 13. Applicant cannot rely
on a phrase that is not part of the applied-for mark in
order to distinguish its mark from the cited mark. We must
determine likelihood of confusion based on the mark for
which registration is sought.
The next du Pont factor we consider is the conditions
under which and the buyers to whom sales are made, i.e.,
“impulse” vs. careful, sophisticated purchasing. The
consumers for both applicant’s and the registrant’s
identified services are the public at large, insofar as the
public includes people who wish to buy or sell homes, or to
have bank accounts or credit cards, and therefore we do not
regard them as being particularly sophisticated. Further,
although banking services and credit card services involve
financial transactions, we do not believe that such
services are necessarily obtained only after careful
consideration. Because banks are federally insured,
consumers do not have to investigate the financial
stability of a particular bank to be sure that their money
is secure. Applicant relies on Amalgamated Bank of New
Ser No. 78553715
20
York v. Amalgamated Trust & Savings Bank, 842 F.2d 1270, 6
USPQ2d 1305 (Fed. Cir. 1988) in support of its argument
that customers of banks are careful purchasers. However,
the Court in Amalgamated specifically recognized that while
some consumers choose their banks with care, others do not.
Thus, for purposes of determining likelihood of confusion,
we cannot treat bank customers as exercising more than
ordinary care. As for credit card services, the care that
is taken in such transactions is on the part of the company
offering the service, in terms of the credit-worthiness of
the consumer, rather than on the part of the consumer who
uses the service. We agree with applicant, however, that
real estate brokerage services, whether on the part of the
person selling a home or buying one, would be chosen with
some degree of care. Although this du Pont factor favors
applicant to this extent, we do not consider it to be
dispositive because the decision to obtain the services of
the registrant would not be the subject of such careful
consideration. Thus, a consumer who was familiar with
applicant’s services offered under the applied-for mark
might well assume, because of the strong similarity of the
marks, including the virtually identical nature of the word
portions of both marks, that the marks identify services
emanating from a single source.
Ser No. 78553715
21
The final du Pont factor discussed by applicant and
the Examining Attorney is the length of time during and
conditions under which there has been concurrent use
without evidence of actual confusion. Applicant argues, at
page 4 of its brief, that the marks have co-existed in the
marketplace for over eleven years without any known
instances of confusion. Applicant relies, in connection
with this factor, not on its use of the applied-for mark,
but on a mark, shown below, that it previously used and has
registered.

Applicant asserts that the current mark “represents only a
slight redesign to modernize Applicant’s Prior Mark.”
We have many problems with applicant’s position.
First, there is an inconsistency as to the facts asserted
by applicant. Applicant claims that it has used the
previous mark since 1995, but its certificate of
registration lists a first use date of 1999. Second,
whatever the correct date is, we consider the present mark
Ser No. 78553715
22
and the prior mark sufficiently different that we can draw
no conclusions as to lack of instances of actual confusion
with the present mark based on applicant’s experiences with
its prior mark. To state the obvious, the prior mark
contains the words “Realty Professionals, Inc.” Although
these words are disclaimed, they are still part of the
mark, and would be seen by consumers as applicant’s trade
name. The stars design, too, has a more prominent
position, as the stars are depicted separately from 1st
U.S.A., rather than having the words superimposed on them.8
Third, there is no evidence of record to show the extent of
use or advertising of applicant’s mark and the registrant’s
mark, such that we can conclude that there has been an
opportunity for confusion to occur, if confusion were
likely. Finally, as the Court stated in In re Majestic
Distilling Co., supra, 65 USPQ2d at 1205, the lack of
evidence of actual confusion carries little weight,
especially in an ex parte context. Accordingly, we
consider this du Pont factor as being neutral.

8 We find it interesting that applicant believes that its
current mark is only a “slight redesign” of its previous mark,
but considers that its current mark and the cited mark have
“significant differences.” Brief, p. 13. We view the applied-
for mark as being “far more different” from applicant’s previous
mark than it is from the cited mark.

Ser No. 78553715
23
After considering all of the du Pont factors on which
we have evidence and/or argument, we find that applicant’s
mark as used for its identified services is likely to cause
confusion with the cited registration.
Decision: The refusal of registration is affirmed.