Chase

Trademark Trial and Appeal Board

Jan 23, 2008

No. 78551005 (T.T.A.B. Jan. 23, 2008)

Hearing: Mailed:
October 11, 2007 January 23, 2008
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Chase
________

Serial No. 78551005
_______

Jeffrey A. Sadowski of Howard & Howard Attorneys, P.C. for
Darin Chase.

Lee-Anne Berns, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney).
_______

Before Seeherman, Grendel and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

Darin Chase (Applicant) has filed an application to
register the mark HOMESITE MORTGAGE in standard characters
on the Principal Register for services identified as
“mortgage lending services” in International Class 36.1
Applicant has disclaimed “MORTGAGE.” The Examining

1 Application Serial No. 78551005, filed January 20, 2005, based
on Applicant’s bona fide intention to use the mark in commerce
under 15 U.S.C. § 1051(b)(1).

THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Serial No. 78551005
2
Attorney2 has finally refused registration under Trademark
Act Section 2(d), 15 U.S.C. § 1052(d), based on a
likelihood of confusion between Applicant’s mark and the
marks in the following registrations:

Registration No. 2406834 for the mark HOMESITE in
standard characters for “insurance services in
the field of property, casualty, and homeowners
insurance, namely, underwriting, claims
administration, claims processing and risk
management services”;

Registration No. 2416450 for the mark HOMESITE
HOME INSURANCE in standard characters for
“insurance services in the field of property,
casualty and homeowners insurance, namely,
underwriting, claims administration and claims
processing and risk management services” with
“HOME INSURANCE” disclaimed;

Registration No. 2456050 for the mark shown here:

for “insurance services in the field of property,
casualty and homeowners insurance, namely,
underwriting, claims administration and claims
processing and risk management services”;

Registration No. 2513119 for the mark HOMESITE
INDEMNITY in standard characters for “insurance
services in the field of property, casualty and
homeowners insurance, namely, underwriting,
claims administration and claims processing and
risk management services” with “INDEMNITY”
disclaimed;

2 A different examining attorney was responsible for the
application until the filing of the appeal brief.
Serial No. 78551005
3

Registration No. 2530278 for the mark HOMESITE
INSURANCE in standard characters for “insurance
services in the field of property, casualty and
homeowners insurance, namely, underwriting,
claims administration and claims processing and
risk management services” with “INSURANCE”
disclaimed;

Registration No. 2932580 for the mark HOMESITE
RENTERS EXPRESS in standard characters for
“insurance services in the field of property,
casualty, homeowners and renters insurance,
namely underwriting, claims administration,
claims processing and risk management services”
with “RENTERS EXPRESS” disclaimed; and

Registration No. 2173292 for the mark HOMESITE in
standard characters for “on-line database inquiry
and posting services in the field of real estate,
namely, dissemination of advertising for others
in the field of real estate via on-line wide
area, global computer networks, providing on-line
sites and home pages.”

Homesite Group Incorporated (registrant) owns all of the
cited registrations, and each of the cited registrations is
active. Applicant has appealed. Applicant and the
Examining Attorney have filed briefs and presented
arguments during a hearing in the case on October 11, 2007.
We affirm the refusal as to each of the cited
registrations, except Registration No. 2173292.
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
Serial No. 78551005
4
the applicant, to cause confusion…” 15 U.S.C. § 1052(d).
The opinion in In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1977) sets forth the
factors to consider in determining likelihood of confusion.
Here, as is often the case, the crucial factors are the
similarity of the marks and the similarity of the services
of the applicant and registrant. Federated Foods, Inc. v.
Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA
1976) (“The fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.”). Below we will consider each of the factors
as to which Applicant or the Examining Attorney presented
arguments or evidence.
The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
While we must consider the marks in their entireties,
it is entirely appropriate to accord greater importance to
the more distinctive elements in the marks. As the Court
of Appeals for the Federal Circuit observed, “…in
Serial No. 78551005
5
articulating reasons for reaching a conclusion on the issue
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 consideration of the marks in their
entireties. Indeed, this type of analysis appears to be
unavoidable.” In re National Data Corp., 753 F.2d 1056,
224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant argued in his briefs and at oral argument
that his mark differs from the cited marks when the marks
are viewed in their entireties because the inclusion of
“MORTGAGE” in his mark effectively distinguishes his mark
from each of the cited marks and because “HOMESITE” is
weak. For example, Applicant states:
Here, the Examining Attorney has purposely chosen
to lop off the “mortgage” portion of the
Applicant’s mark and conducted her analysis
solely on the basis of the “homesite” portion of
the Applicant’s mark in comparison to the
“homesite” portions of the cited registrations.
This is clearly improper. The analysis should
have been conducted on the basis of the whole
mark… Taking this type of “dissected”
examination to the extreme, the Examining
Attorney could take a single syllable, or perhaps
even a single letter, and declare “similarity”
and thus likeihood of confusion between two or
more competing marks.

Applicant’s Reply Brief at 2-3.

Serial No. 78551005
6
Applicant argues further that the disclaimed term
“MORTGAGE” in his mark and the disclaimed terms in the
cited marks are of critical significance, if not dominant,
in the comparison of the marks. Applicant states,
Just because a word has been disclaimed does not
necessarily mean that it cannot be the dominant
portion of the mark… In this instance, the word
“mortgage” in the Applicant’s mark (as well as
the disclaimed portions of the Registrant’s
marks) convey a great deal of information to the
ordinary consumer that would create a strong
commercial impression thereupon.

Id. at 4.
The Examining Attorney disagrees, arguing that the
marks, when viewed in their entireties, are similar because
HOMESITE is the dominant element in Applicant’s mark and in
each of the marks in the cited registrations.
Applicant repeatedly cites the National Data decision
in support of his position; the Examining Attorney also
relies on National Data. In that case the Court of Appeals
for the Federal Circuit affirmed a refusal to register the
mark THE CASH MANAGEMENT EXCHANGE for “computerized cash
management services” based on a prior registration for the
mark CASH MANAGEMENT ACCOUNT for “financial services
involving the use of plastic credit cards by the card
holders for loans to card holders from their brokerage
equity account.” In re National Data Corp., 224 USPQ at
Serial No. 78551005
7
749. We find the Examining Attorney’s arguments, including
her application of National Data to the facts of this case,
persuasive. On the other hand, we find Applicant’s
arguments, in particular those based on National Data,
unconvincing.
We conclude that HOMESITE is the dominant element in
Applicant’s mark as well as in each of the cited marks. In
fact, HOMESITE is the only distinctive word element in
Applicant’s mark and in each of the cited marks. Moreover,
in two of the cited registrations HOMESITE is the only
element. There is no serious dispute that the term
MORTGAGE in Applicant’s mark, which Applicant disclaimed,
is generic and not distinctive as applied to Applicant’s
“mortgage lending services.” Likewise, there is no serious
dispute that each of the additional terms in the cited
marks, HOME INSURANCE, INDEMNITY, INSURANCE and RENTERS
EXPRESS, each disclaimed, are likewise generic or
descriptive and not distinctive as applied to the
identified services. As such, the word elements in
addition to HOMESITE in Applicant’s mark and each of the
cited marks are insufficient to distinguish the marks.
Applicant appears to miss the fundamental point of the
analysis in National Data. We readily concede, as
Applicant argues, that the additional disclaimed terms in
Serial No. 78551005
8
each of the marks convey significant information. However,
the information relates to the nature of the identified
services, not the source of the services. It is HOMESITE
in each of the marks, Applicant’s as well as the cited
marks, which identifies the source of the services in each
instance. And, it is the source identifying element or
elements which are dominant and most important in
determining likelihood of confusion. Therefore, we
conclude that HOMESITE is the dominant word element in
Applicant’s mark and in each of the cited marks.
Also, in the case of the mark in Registration No.
2456050 which includes the word HOMESITE and a design
element, here too it is the word element, HOMESITE, which
is dominant. In re Dixie Restaurants, Inc., 105 F.3d 1405,
41 USPQ2d 1531, 1534 (Fed. Cir. 1997). In In re Appetito
Provisions Co. Inc., 3 USPQ2d 1553, 1554 (TTAB 1987), the
Board stated, “Thus, if one of the marks comprises both a
word and a design, then the word is normally accorded
greater weight because it would be used by purchasers to
request the goods or services. Kabushiki Kaisha Hattori
Tokeiten v. Scuotto, 228 USPQ 461, 462 (TTAB 1985).”
We also find Applicant’s attempt to show that HOMESITE
is weak unconvincing. To support that contention Applicant
submitted a copy of a dictionary defintion of “homesite” as
Serial No. 78551005
9
“a location of or suitable for a home” and copies of three
third-party registrations: Registration No. 2730270 for
the mark HOMESITEPRO for “providing online computer
database in the field of building plans, building contents,
building owner information, models, warranties and
policies”; Registration No. 2557977 for the mark MYHOMESITE
for “providing an online computer database in the field of
building plans, building contents, building owner
information, models, warranties and policies,” both owned
by a single entity; and Registration No. 2784319 for the
mark LOTSMOREHOMESITES.COM for “providing information in
the field of real estate in the nature of a website
featuring tours of residential and commercial real estate.”
We find this evidence insufficient in quality and quantity
to establish that “HOMESITE” is weak as used in Applicant’s
mark or any of the cited marks. There are significant
differences between the marks and the goods and services
identified in these registrations and the application and
registrations at issue here. Also, even if “homesite” has
a suggestive meaning here, as the dictionary entry may
indicate, it is entitled to protection. Hollister v. Ident
A Pet, Inc., 193 USPQ 439, 442 (TTAB 1976). This is
especially so here where HOMESITE is the only distinctive
word element in the marks at issue.
Serial No. 78551005
10
Accordingly, when we consider Applicant’s mark and the
cited marks in their entireties, we conclude that
Applicant’s mark is highly similar to each of the cited
marks in appearance, sound, connotation and commercial
impession.
The Services
The services in the application and cited rgistrations
need not be identical to find a likelihood of confusion
under Section 2(d) of the Trademark Act. They need only be
related in such a way that the circumstances surrounding
their marketing would result in relevant consumers
mistakenly believing that the services originate from the
same source. In re International Telephone & Telegraph
Corp., 197 USPQ 910, 911 (TTAB 1978). See also On-Line
Careline Inc. v. America Online Inc., 229 F.3d 1080, 56
USPQ2d 1471 (Fed. Cir. 2000).
Furthermore, in comparing the services and the
channels of trade for the services, we must consider the
services as identified in the application and
registrations. See Octocom Systems, Inc. v. Houston
Computers Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787
(Fed. Cir. 1990) (“The authority is legion that the
question of registrability of an applicant’s mark must be
decided on the basis of the identification of goods set
Serial No. 78551005
11
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods,
the particular channels of trade or the class of purchasers
to which the sales of goods are directed.”) See also Paula
Payne Products v. Johnson Publishing Co., 177 USPQ at 77
(“Trademark cases involving the issue of likelihood of
confusion must be decided on the basis of the respective
descriptions of goods.”).
Also, the proper inquiry is not whether the services
themselves could be confused, but rather whether the source
of the services could be confused. Safety-Kleen Corp. v.
Dresser Indus., Inc., 518 F.2d 1399, 186 USPQ 476, 480
(CCPA 1975); In re Rexel, Inc., 223 USPQ 830, 831 (TTAB
1984).
Here again, Applicant argues strenuously that his
services are distinct from the services in the cited
registrations. Applicant states, “The only possible
similarity between HOMESITE MORTGAGE and the cited marks is
the fact that the services are somewhat related to real
estate. Such a broad relationship is insufficient to
create a likelihood of confusion.” Applicant’s Brief at 7.
Applicant argues further,
Listing services and property management services
are very different from mortgage lending
services, which requires that a provider have an
Serial No. 78551005
12
extensive financial background and understanding.
Mortgage lending is also very different from
insurance services. Both services are
independently regulated by the government, and
providers of each service have to meet certain
separate certification requirements.
Additionally, buyers purchase insurance and
mortgages for extremely different reasons.

Id. at 8.

The Examining Attorney argues that the services in the
application and the cited registrations are related and
submitted several use-based, third-party registrations for
marks which have been registered for both Applicant’s
services and the services in the cited registrations,
including the following:
Registration No. 1801075 which identifies, among
other services, “mortgage lending services…
insurance administration services… property
insurance underwriting services, casualty
insurance underwriting services, insurance
brokerage services”;

Registration No. 1804767 which identifies, among
other services, “financial services; namely,
mortgage lending… and insurance agency and
brokerage services in the field of mortgage
protection, fire, disability and homeowners
insurance”;

Registration No. 2316911 which identifies, among
other services, “personal lines insurance
underwriting services, namely… homeowner's and
umbrella insurance coverage… mortgage lending
services…”;

Registration No. 2545847 which identifies, among
other services “mortgage lending services and
insurance services, namely, brokerage,
consultation, and underwriting in the fields of
Serial No. 78551005
13
mortgage financing for purchase loans, refinance
loans, and equity loans, and homeowners
insurance, home warranty insurance…”; and

Registration No. 2863176 which identifies, among
other services, “insurance services, namely,
providing insurance and annuity brokerage and
underwriting services in the field of… property
insurance… insurance agencies, insurance
consultation and brokerage in the fields life,
property and casualty… financial services,
namely, mortgage lending, and mortgage
financing….”

These registrations, and the others submitted by the
Examining Attorney, indicate that the financial and
insurance services in the application and the cited
registrations are of a type which may emanate from the same
source. In re TSI Brands Inc., 67 USPQ2d 1657, 1659 (TTAB
2002); In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993).
We find Applicant’s arguments regarding the services
unpersuasive. Contrary to Applicant’s arguments, there is
substantially more to the relationship between his services
and the services identified in the cited registrations than
the mere fact that they are all “somewhat related to real
estate.” In fact, Applicant’s services and the services
identified in the cited registrations, with the exception
of Registration No. 2173292, are all financial services
related to real estate. Furthermore, as the evidence
Serial No. 78551005
14
indicates, Applicant’s mortgage lending services and
insurance services, are the types of services which may
emanate from the same source.
Accordingly, based on the evidence the Examining
Attorney provided, we conclude that Applicant’s services
and the services identified in the cited registrations,
with the exception of Registration No. 2173292, are
related.
Registration No. 2173292 covers “on-line database
inquiry and posting services in the field of real estate,
namely, dissemination of advertising for others in the
field of real estate via on-line wide area, global computer
networks, providing on-line sites and home pages.” In the
absence of evidence establishing that these services are
related to mortgage lending services, we conclude that
these services are not related to Applicant’s services.
Consequently, we find that the Office has not established a
likelihood of confusion based on Registration No. 2173292.
Other Factors
Applicant has also argued that there is no likelihood
of confusion in this case based on a number of additional
du Pont factors. Even though we find those arguments
unpersuasive, we will address the principal arguments
briefly.
Serial No. 78551005
15
Applicant argues that confusion is not likely because
“the services associated with each respective mark are
expensive, risky and complex.” Applicant’s Brief at 9.
Applicant argues further, “Also, the prospective customers
are generally very sophisticated, and prospective customers
will necessarily exercise a great deal of care in
determining the source of the services.” Id. Applicant
also argues, “No consumer, of even dubious sophistication,
will be confused into patronizing a mortgage company when
attempting to purchase insurance…” Id. at 10. Applicant
caps these arguments by stating, “No doubt prospective
customers will be acutely aware of the respective
companies/sources that are providing these services,
thereby eliminating any possibility of confusion.” Id. at
11.
We readily acknowledge that potential customers for
mortgage lending services and insurance services generally
do not act on impulse but exercise a degree of care in the
purchasing decision. On the other hand, the potential
purchasers of these services include the general public
with widely varying degrees of sophistication. In his
arguments, Applicant places an undue burden on the
purchaser. Applicant effectively presumes that, under the
circumstances, potential purchasers will be able to
Serial No. 78551005
16
distinguish the source of the respective services even if
they are offered under similar marks. This is contrary to
logic and the law. Even sophisticated purchasers are not
immune from trademark confusion. In re Decombe, 9 USPQ2d
1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558
(TTAB 1983). Accordingly, we conclude that the
circumstances surrounding the purchase of the services at
issue here and the sophistication of the purchasers in no
way diminish the likelihood of confusion in this case.
Applicant also points to an example of registrations
owned by different parties for services including banking
services and insurance services. The marks in question
each include the word “CENTRAL” as an element. Applicant
argues that we should permit registration of his mark based
on that example. However, we must decide each case on its
merits based on the record before us. Actions on prior
applications based on different facts do not dictate the
result in later cases. See In re Nett Designs Inc., 236
F.3d 1339, 57 USPQ2d 1564, 1566 (Fed. Cir. 2001).
Accordingly, we reject this argument.
In similar fashion, Applicant cites to a number of
cases, arguing that those dictate a reversal here. In
particular, in both his briefs and in oral argument
Applicant repeatedly cited Allstate Insurance Co. v.
Serial No. 78551005
17
Allstate Investment Corp., 210 F.Supp. 25, 136 USPQ 156
(W.D. La. 1962), as well as other cases originating in U.S.
district courts. These cases involve infringement and
other similar claims and, as such, have limited
applicability to the registration issues before us here.
In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986). Suffice it to say that we have considered all of
Applicant’s arguments, including arguments based on these
cases, and arguments not specifically discussed here, and
found them unpersuasive.
Finally, based on our consideration of all evidence
and arguments bearing on the du Pont factors we conclude
that there is a likelihood of confusion between Applicant’s
mark and the marks in the cited registrations, with the
exception of Registration No. 2173292. We conclude so
principally because Applicant’s HOMESITE MORTGAGE mark is
highly similar to each of the cited marks and because
Applicant’s mortgage lending services are related to the
insurance services identified in the cited registrations.
Decision: We affirm the refusal under Trademark Act
Section 2(d).