BBSF, L.L.C.

Trademark Trial and Appeal Board

Mar 25, 2009

No. 77051221 (T.T.A.B. Mar. 25, 2009)

Mailed:
March 25, 2009

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re BBSF, L.L.C.
________

Serial No. 77051221
_______

Arthur J. Greenbaum of Cowan, Liebowitz & Latman, P.C. for
BBSF, L.L.C.

Cimmerian Coleman, Trademark Examining Attorney, Law Office
102 (Strzyz, Managing Attorney).
_______

Before Walters, Holtzman and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

BBSF, L.L.C. (“applicant”) filed an intent-to-use
application to register the mark METRO TOWER, in standard
character form, for services ultimately identified as “real
estate services, namely, development of a high rise office
complex for the building known as Metro Tower, located at
Stamford Transportation Center in Station Place, Stamford,
Connecticut,” in Class 37. Applicant disclaimed the
exclusive right to use the word “tower.”
The Trademark Examining Attorney refused to register
applicant’s mark under Section 2(d) of the Trademark Act of
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Serial No. 77051221
2
1946, 15 U.S.C. §1052(d), on the ground that applicant’s
mark is likely to cause confusion with the mark
METROPOLITAN TOWER, in standard character form, for “real
estate services, namely, managing commercial, residential
and retail property for the building known as Metropolitan
Tower, located at 146 West 57th Street, New York, New York
10019,” in Class 36.1
At the outset, we note that applicant’s amendment to
its description of services to state that its services are
intended to be rendered in connection with a particular
building located in Stamford, Connecticut is essentially a
geographical restriction on the use of the mark. To the
extent that applicant is attempting to obtain a concurrent
use registration without the benefit of a concurrent use
proceeding, such a circumvention of the concurrent use
proceeding is improper. In re Home Federal Savings and

1 Registration No. 3200306, issued January 23, 2007.
Pursuant to a settlement agreement between the registrant
and an opposer, registrant amended its description of
services to read as follows: “real estate services,
namely, managing commercial, residential and retail
property for the building known as Metropolitan Tower,
located at 146 West 57th Street, New York, New York 10019,
although such services will include marketing and sales
efforts to prospective tenants and buyers both within and
without the State of New York.” (Emphasis added). For
some reason, the highlighted portion was not included in
the description of services when the mark was registered.
However, we must consider the description of services as it
appears in the registration.
Serial No. 77051221
3
Loan Association, 213 USPQ 68, 69 (TTAB 1982). See also
Selfway, Inc. v. Travelers Petroleum, Inc., 579 F.2d 75,
198 USPQ 271, 277 (CCPA 1978) (concurrent rights may only
be adjudicated in a concurrent use proceeding); Morgan
Services Inc. v. Morgan Linen Services Inc., 12 USPQ2d
1841, 1843 (TTAB 1989) (“territorial restrictions to
trademark registrations can be made only as the result of
concurrent use proceedings in the Patent and Trademark
Office or as the result of a court decision”).
Accordingly, while the description of services pertains to
a building in a specific geographic location, we construe
the recitation in the application as pertaining to services
rendered nationwide and the application as an application
to register the mark for the entire United States.
Section 7(b) of the Trademark Act of 1946, 15 U.S.C.
§1057(b) provides as follows:
A certificate of registration of a mark
upon the principal register provided by
this Act shall be prima facie evidence
of the validity of the registration,
registrant’s ownership of the mark, and
of registrant’s exclusive right to use
the mark in commerce in connection with
the goods or services specified in the
certificate, subject to any conditions
and limitations stated therein.

Similarly, the cited registration recites services
that pertain to a building in a specific location.
Serial No. 77051221
4
However, since this registration was not issued subject to
a concurrent use proceeding, we construe the recitation in
the registration as pertaining to services rendered
nationwide; and the registration is a geographically
unrestricted registration that is nationwide in scope. In
re Home Federal Savings and Loan Association, 213 USPQ at
69. In view of the foregoing, we will not consider the
identified services in the either the registration or the
application to be geographically limited in determining the
issue of likelihood of confusion before us. Rather, we
consider the reference to a particular building at a
specific location in the application and registration to be
purely informational in nature.
Our determination of likelihood of confusion under
Section 2(d) is based on an analysis of all of the
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 Company, 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. See Federated Foods, Inc. v. Fort Howard Paper
Serial No. 77051221
5
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976) (“The
fundamental inquiry mandated by §2(d) goes to the
cumulative effect of differences in the essential
characteristics of the goods and differences in the
marks”).
A. The similarity or dissimilarity and nature of the
services as described in the application and
registration at issue.

It is well settled that applicant’s services and the
registrant’s services do not have to be identical or
directly competitive to support a finding that there is a
likelihood of confusion. It is sufficient if the
respective services are related in some manner and/or that
the conditions surrounding their marketing are such that
they would be encountered by the same persons under
circumstances that could, because of the similarity of the
marks used in connection therewith, give rise to the
mistaken belief that they emanate from or are associated
with a single source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785 (TTAB 1993); In re International
Telephone & Telegraph Corp., 197 USPQ 910, 911 (TTAB 1978).
The examining attorney submitted eleven third-party
registrations based on use in commerce identifying both
real estate management and real estate development
services. Third-party registrations which individually
Serial No. 77051221
6
cover a number of different services that are based on use
in commerce may have some probative value to the extent
that they serve to suggest that the listed services are of
a type which may emanate from the same source. In re
Albert Trostel & Sons Co., 29 USPQ2d at 1785-1786; In re
Mucky Duck Mustard Co. Inc., 6 USPQ2d 1467, 1470 n.6 (TTAB
1988).
Moreover, real estate development services and real
estate management services are complementary services in
that after a company develops a property, it would be
logical and advantageous for the developer to manage the
property.
In view of the foregoing, we find that applicant’s real
estate development services are closely related to the
registrant’s real estate management services.
B. The similarity or dissimilarity of likely-to-continue
trade channels and classes of consumers.

With the exception of the geographic information noted
in the description of services, there are no limitations as
to channels of trade or classes of purchasers in either the
application or the registration. Therefore, it is presumed
that the real estate development and management services
identified in the application and cited registration move
in all channels of trade normal for those services, and
Serial No. 77051221
7
that they are available to all classes of purchasers for
the listed services. See In re Linkvest S.A., 24 USPQ2d
1716, 1716 (TTAB 1992). Accordingly, we must presume that
both applicant’s and registrant’s services would be
rendered to all commercial, residential and retail property
owners.
C. The similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression.

Finally, we turn to the du Pont likelihood of
confusion factor focusing on the similarity or
dissimilarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression.
In re E. I. du Pont De Nemours & Co., 177 USPQ at 567. In
a particular case, any one of these means of comparison may
be critical in finding the marks to be similar. In re
White Swan Ltd., 9 USPQ2d 1534, 1535 (TTAB 1988); In re
Lamson Oil Co., 6 USPQ2d 1041, 1042 (TTAB 1988). In
comparing the marks, we are mindful that where, as here,
the services are closely related, the degree of similarity
necessary to find likelihood of confusion need not be as
great as where there is a recognizable disparity between
the services. Century 21 Real Estate Corp. v. Century Life
of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992); Real Estate One, Inc. v. Real Estate 100 Enterprises
Serial No. 77051221
8
Corporation, 212 USPQ 957, 959 (TTAB 1981); ECI Division of
E-Systems, Inc. v. Environmental Communications
Incorporated, 207 USPQ 443, 449 (TTAB 1980).
Moreover, the 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 offered under the
respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants
Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991),
aff’d unpublished, No. 92-1086 (Fed. Cir. June 5, 1992).
The proper focus is on the recollection of the average
customer, who retains a general rather than specific
impression of the marks. Winnebago Industries, Inc. v.
Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980);
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975). As indicated above, the relevant public would
be commercial, residential and retail property owners.
Applicant’s mark METRO TOWER is similar to the
registered mark METROPOLITAN TOWER in terms of appearance,
sound, meaning and commercial impression because the term
Serial No. 77051221
9
“metro” is an abbreviation for “metropolitan.”2 “[U]sers of
language have a universal habit of shortening full names –
from haste or laziness or just economy of words. Examples
are: automobile to auto; telephone to phone; necktie to
tie; gasoline service station to gas station.” In re Abcor
Development Corp., 588 F.2d 511, 200 USPQ 215, 219 (CCPA
1978) (J. Rich, concurring).
[C]ompanies are frequently called by
shortened names, such as Penney’s for
J.C. Penney’s, Sears for Sears and
Roebuck (even before it officially
changed its name to Sears alone),
Ward’s for Montgomery Ward’s, and
Bloomies for Bloomingdales.

Marshall Field & Co. v. Mrs. Fields Cookies, 25 USPQ2d
1321, 1333 (TTAB 1992).
On the other hand, applicant argues that “metro” may
also mean a “subway system.” In fact, the “Metro Tower”
building referenced in applicant’s description of services
will have “unmatched access to mass transit.”3 “Therefore,
simply because ‘Metro’ can be used as an abbreviation for
‘Metropolitan’ does not mean that the two terms are
interchangeable and incapable of creating distinct
commercial impressions.”4 Applicant contends that in this

2 Encarta.msn.com attached to the January 2, 2008 Office Action
(“same as metropolitan . . . metro Atlanta”).
3 Jeffrey Newman Dec., Exhibit 1 (draft brochure) attached to
applicant’s September 21, 2007 response.
4 Applicant’s Brief, pp. 3-4.
Serial No. 77051221
10
case, consumers will associate applicant’s METRO TOWER mark
with the transit definition. However, applicant’s draft
brochure describing its project also states that “[t]he
building will serve as a gateway marker to the City.”
Accordingly, consumers are equally likely to interpret
METRO TOWER as meaning city tower, rather than subway
tower.
Applicant also argues that the words “metropolitan”
and “metro,” when used in connection with real estate
services, are weak terms, entitled to a narrow scope of
protection, because they have been registered nine times in
connection with real estate services. “[I]f the evidence
establishes that the consuming public is exposed to third-
party use of similar marks on similar services, this
evidence ‘is relevant to show that the mark is relatively
weak and entitled to only a narrow scope of protection.’”5

5 Applicant’s Brief, pp. 7-8. Applicant submitted a table
identifying the mark, registration number and the services.
Generally, the submission of a list of registrations does not
make them of record. In re Duofold Inc., 184 USPQ 638, 640 (TTAB
1974). To make registrations of record, soft copies of the
registrations or the complete electronic equivalent from the
electronic records of the Patent and Trademark Office must be
submitted. Raccioppi v. Apogee Inc., 47 USPQ2d 1368, 1370 (TTAB
1998). If the applicant submits improper evidence of third-party
registrations, the examining attorney should object to the
evidence in the next Office action, or the Board may consider the
objection to be waived. In re Broyhill Furniture Industries,
Inc., 60 USPQ2d 1511, 1513, n.3 (TTAB 2001). Where as here, the
applicant could have corrected the improper submission of the
third-party registrations had a timely objection been raised, we
Serial No. 77051221
11
Third-party registrations do not prove that “metro”
and “metropolitan” are weak terms. Absent evidence of
actual use, third-party registrations have little probative
value because they are not evidence that the marks are in
use on a commercial scale or that the public has become
familiar with them. See Smith Bros. Mfg. Co. v. Stone Mfg.
Co., 476 F.2d 1004, 177 USPQ 462, 463 (CCPA 1973) (the
purchasing public is not aware of registrations reposing in
the U.S. Patent and Trademark Office). See also In re Hub
Distributing, Inc., 218 USPQ 284, 285 (TTAB 1983).
[I]t would be sheer speculation to draw
any inferences about which, if any of
the marks subject of the third party
(sic) registrations are still in use.
Because of this doubt, third party
(sic) registration evidence proves
nothing about the impact of the third-
party marks on purchasers in terms of
dilution of the mark in question or
conditioning of the purchasers as their
weakness in distinguishing source.

In re Hub Distributing, Inc., 218 USPQ at 286.
In evaluating the marks in their entireties, we find
that the similarities in the marks in terms of appearance,
sound, meaning and commercial impression outweigh the
differences, and therefore the marks are similar.

deem the objection to have been waived, and consider the
registrations for whatever probative value they may have.
Serial No. 77051221
12
D. Balancing the factors.
In view of the facts that the marks are similar and
that the services are closely related, and because we must
presume that the services move in the same channels of
trade and are available to the same classes of consumers,
we find that applicant’s registration of the mark METRO
TOWER for “real estate services, namely, development of a
high rise office complex for the building known as Metro
Tower, located at Stamford Transportation Center in Station
Place, Stamford, Connecticut” is likely to cause confusion
with the mark in the cited registration, METROPOLITAN TOWER
for “real estate services, namely, managing commercial,
residential and retail property for the building known as
Metropolitan Tower, located at 146 West 57th Street, New
York, New York 10019.”
Decision: The refusal to register is affirmed.