No. 86391941 (T.T.A.B. Dec. 2, 2016)

Cindy Chism

Trademark Trial and Appeal BoardDec 2, 2016

No. 86391941 (T.T.A.B. Dec. 2, 2016)

This Opinion is not a Precedent of the TTAB Mailed: December 2, 2016 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Cindy Chism _____ Serial No. 86391941 _____ Matthew H. Swyers of The Trademark Company, for Cindy Chism. Julie Watson, Trademark Examining Attorney, Law Office 109, Michael Kazazian, Managing Attorney. _____ Before Zervas, Bergsman and Kuczma, Administrative Trademark Judges. Opinion by Bergsman, Administrative Trademark Judge: Cindy Chism (“Applicant”) seeks registration on the Principal Register of the mark FRONT DOOR PROPERTIES (in standard characters) for “commercial and residential real estate agency services; real estate listing; real estate services, namely, property management services for condominium associations, homeowner Serial No. 86391941 - 2 - associations and apartment buildings,” in International Class 36.1 Applicant disclaimed the exclusive right to use the word “properties.” The Trademark Examining Attorney has refused registration of Applicant’s mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark so resembles the registered mark FRONTDOOR (in standard characters) for “information services provided via a global computer network, namely, providing an interactive website featuring specific news and instructive information on the process of home purchasing, selling, renting, and leasing,” in Class 36, as to be likely to cause confusion.2 After the Trademark Examining Attorney made the refusal final, Applicant appealed to this Board. We affirm the refusal to register. Our determination 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) (“duPont”) (cited in B&B Hardware, Inc. v. Hargis Ind., Inc., 135 S.Ct.1293, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We have considered each duPont factor that is relevant and for which there is evidence of record. See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 1 Application Serial No. 86391941 was filed on September 11, 2014, under Section 1(a) of the Trademark Act of 1946, 15 U.S.C. § 1052(a), based upon Applicant’s claim of first use anywhere and use in commerce since at least as early as June 2014. 2 Registration No. 4466672, registered January 14, 2014. Serial No. 86391941 - 3 - 2006); ProMark Brands Inc. v. GFA Brands, Inc., 114 USPQ2d 1232, 1242 (TTAB 2015) (“While we have considered each factor for which we have evidence, we focus our analysis on those factors we find to be relevant.”). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the services. See In re Chatam Int’l Inc., 380 F.2d 1340, 71 USPQ2d 1944 (Fed. Cir. 2004); Federated Foods, Inc. v. Fort Howard Paper 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.”); see also In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB 2015). A. The similarity or dissimilarity of the marks. We now turn first to the duPont 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, “two marks may be found to be confusingly similar if there are sufficient similarities in terms of sound or visual appearance or connotation.” Kabushiki Kaisha Hattori Seiko v. Satellite Int’l, Ltd., 29 USPQ2d 1317, 1318 (TTAB 1991), aff’d mem., 979 F.2d 216 (Fed. Cir. 1992) (citation omitted). See also Eveready Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1519 (TTAB 2009) (quoting Krim-Ko Corp. v. Coca-Cola Co., 390 F.2d 728, 156 USPQ 523, 526 (CCPA 1968) (“It is sufficient if the similarity in either form, spelling or sound alone is likely to cause confusion.”)). Serial No. 86391941 - 4 - “The proper test is not a side-by-side comparison of the marks, but instead ‘whether the marks are sufficiently similar in terms of their commercial impression’ such that persons who encounter the marks would be likely to assume a connection between the parties.” Coach Servs. Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). See also 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 mem., 972 F.2d 1353 (Fed. Cir. 1992). The proper focus is on the recollection of the average customer, who retains a general rather than specific impression of the marks. Geigy Chem. Corp. v. Atlas Chem. Indus., Inc., 438 F.2d 1005, 169 USPQ 39, 40 (CCPA 1971); L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1438 (TTAB 2012); Winnebago Indus., Inc. v. Oliver & Winston, Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). Because the services at issue include residential real estate agency services and providing information over the Internet regarding selling, renting, and leasing real estate, the average customer is an ordinary consumer looking to buy, sell, lease or rent a home. In this regard, we must consider the least sophisticated consumer. Somerset Distilling, Inc. v. Speymalt Whiskey Distrib. Ltd., 14 USPQ2d 1539, 1542 (TTAB 1989) (“While we realize that certain purchasers of alcoholic beverages may be aficionados and know not only ‘their brands’ but which companies make which trademarked products, we also realize that other consumers may not be as knowledgeable, and may purchase Scotch whisky, gin or vodka as gifts, or to stock a bar for their guests. These consumers, at the very least, Serial No. 86391941 - 5 - are likely to believe that Scotch whisky, gin and vodka all emanate from the same source if they are sold under the same or similar marks.”); In re Pierce Foods Corp., 230 USPQ 307, 309 (TTAB 1986) (“Nor are we persuaded by applicant’s arguments that confusion is unlikely because the purchasers are careful and sophisticated. Applicant’s institutional purchasers could well range in size from a large motel and restaurant chain to a relatively small restaurant. Therefore, not all of applicant’s purchasers can be expected to be as highly discriminating as applicant contends.”). Thus, not every person selling, buying, renting or leasing a home is a knowledgeable and careful consumer; rather, there is a broad range of consumers who exercise a wide degree of purchaser care. Applicant is seeking to register the mark FRONT DOOR PROPERTIES and the registered mark FRONTDOOR was cited as a bar to registration. The fact that the registered mark is FRONTDOOR, presented as one word, while FRONT DOOR in Applicant’s mark is presented as two words, has little bearing on our analysis. The presence or absence of a space between the two words is an inconsequential difference that even if noticed or remembered by consumers would not serve to distinguish these marks. See, e.g., Giersch v. Scripps Networks Inc., 90 USPQ2d 1020, 1025 (TTAB 2009) (finding that DESIGNED TO SELL does not create a distinct commercial impression from DESIGNED2SELL); Seaguard Corp. v. Seaward Int’l, Inc., 223 USPQ 48, 51 (TTAB 1984) (SEA GUARD and SEAGUARD are “essentially identical”); In re Best Western Family Steak House, Inc., 222 USPQ 827, 827 (TTAB 1984) (“there can be little doubt that the marks [BEEFMASTER for restaurant Serial No. 86391941 - 6 - services and BEEF MASTER for frankfurters and bologna] are practically identical and indeed applicant has not argued otherwise.”).3 The words “Front Door” are the dominant elements of Applicant’s mark because the word “Properties” is descriptive when used in connection with real estate and, therefore, Applicant disclaimed the exclusive right to use “properties.” It is well- settled that descriptive matter may have less significance in likelihood of confusion determinations.4 See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding descriptive terms, this court has noted that the ‘descriptive component of a mark may be given little weight in reaching a conclusion on the likelihood of confusion.’”) (quoting In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, 752 (Fed. Cir. 1985)); In re Dixie Rests. Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997); In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB 2001) (disclaimed matter is often “less significant in creating the mark’s commercial impression”). There is nothing improper in stating 3 We disagree with Applicant’s contention that “[t]he average consumer would find the Registrant’s FRONTDOOR, one word, as unusual and is therefore dissimilar from the Applicant’s traditional rendering of term “FRONT DOOR.” Applicant’s Brief, p. 9 (6 TTABVUE 10). 4 Applicant requests “the Board to give due consideration to the commercial reality that the marks will be seen and encountered by the consumers as the marks are applied or registered” and that “in their entireties, the marks are visually dissimilar.” Applicant’s Brief, p. 9 (6 TTABVUE 10). However, as explained above, because the word “properties” is descriptive, it has very little trademark significance and, therefore, consumers will rely on the words “Front Door” to identify and distinguish Applicant’s services. In fact, consumers may shorten Applicant’s mark to just “Front Door.” See Big M Inc. v. The United States Shoe Co., 228 USPQ 614, 616 (TTAB 1985) (“we cannot ignore the propensity of consumers to often shorten trademarks and, in the present case, this would be accomplished by dropping the “T.H.” in referring to registrant's stores [T.H. MANDY].”). Serial No. 86391941 - 7 - that, for rational reasons, more or less weight has been given to a particular feature of a mark, such as a common dominant element, provided the ultimate conclusion rests on a consideration of the marks in their entireties. See In re National Data Corp., 224 USPQ at 751. Further reinforcing the importance of the words “Front Door” as the dominant part of Applicant’s mark is their location in the first part of the mark. See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and the first word to appear on the label); Century 21 Real Estate Corp. v. Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992) (upon encountering the marks, consumers will first notice the identical lead word); 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”). The dominant part of Applicant’s mark is identical to the Registrant’s mark and Applicant’s mark incorporates Registrant’s entire mark. While there is no explicit rule that likelihood of confusion automatically applies where the applicant’s mark contains in part the whole of the registered mark, the fact that the cited registered mark is subsumed by applicant’s mark increases the similarity between the two. See, e.g., In re Toshiba Med. Sys. Corp., 91 USPQ2d 1266, 1271 (TTAB 2009) (applicant’s mark VANTAGE TITAN for medical magnetic resonance imaging diagnostic apparatus is similar to TITAN for medical ultrasound diagnostic apparatus); In re El Serial No. 86391941 - 8 - Torito Rests., Inc., 9 USPQ2d 2002, 2004 (TTAB 1988) (applicant’s mark MACHO COMBOS for food items is similar to MACHO for restaurant entrees); In re Riddle, 225 USPQ 630, 632 (TTAB 1985) (RICHARD PETTY’S ACCU TUNE for automotive service centers is similar to ACCU-TUNE for automotive testing equipment). Applicant argues that its mark FRONT DOOR PROPERTIES “elicits the commercial impression suggestive of finding ideal commercial and residential real estate” while Registrant’s mark, FRONTDOOR, conveys “the commercial impression of availing an ‘open, legitimate means’ of getting a home.”5 To support this argument, Applicant submitted the dictionary definition of “front door” which is defined as follows: 1. the main entrance to a house 2. an open legitimate means of obtaining a job, position, etc.: to get in by the front door.6 However, when FRONTDOOR is used in connection with “providing an interactive website featuring specific news and instructive information on the process of home purchasing, selling, renting, and leasing,” it is just as likely to elicit the commercial impression of an entrance to a house as to a legitimate means of obtaining a house. In view of the foregoing, we find that the marks are similar in terms of appearance, sound, meaning and commercial impression. 5 Applicant’s Brief, p. 10 (6 TTABVUE 11). 6 The Free Dictionary (thefreedictionary.com) based on the Collins Dictionary (2003) attached to Applicant’s April 10, 2015 Response to an Office Action. Serial No. 86391941 - 9 - B. The similarity or dissimilarity and nature of the services. The services are related because real estate agencies often provide “instructive information on the process of home purchasing, selling, renting, and leasing” and, thus, the same consumers would encounter both activities under circumstances likely to give rise to the mistaken belief that the services emanate from a single source based on the similarity of the marks. See Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722; Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d 1399, 1410 (TTAB 2010); Schering Corporation v. Alza Corporation, 207 USPQ 504, 507 (TTAB 1980). Those circumstances include research in preparation for buying, selling, renting or leasing a home and the actual buying, selling, renting or leasing a home. For example, Applicant’s own website provides a section on “Buyer & Seller Tips,” as well as a mortgage calculator.7 See also the website excerpts listed below: 1. Long & Foster Newsroom (newsroom.longandfoster.com), a section of the Long & Foster website, a real estate agency and brokerage and property management company, featuring press releases, media alerts, and general real estate information (e.g. “The Renovation Dilemma: What To Fix If You’re Selling” and “Winter’s Landscape Can Be Perfect Backdrop for Home Sales”). The Long & Foster website also features a posting explaining the settlement process; 7 December 23, 2014 Office Action. Serial No. 86391941 - 10 - 2. Wyndham Vacation Rentals website (wyndhamvacationrentals.com) for a property management company that features real estate rentals and travel guide information; 3. Stuart & Maury Inc. website (stuartandmaury.com), a real estate agency and brokerage, that advertises the company’s real estate services and also provides information about buying and renting a house (e.g., “Steps in Buying” posting and “Renting a Home” posting); and 4. Peake Management & Sales, Inc. website (peakeinc.com), a “full service property management & real estate sales firm,” features a blog in the field of real estate and its website includes a library of useful documents (e.g., rental handbook, lease applications, move out instructions, etc.).8 Applicant contends that the services “differ insofar as the applicant is providing real estate services along with property management and assisting with homeowners [sic] association, whereas the blocking trademark simply provides news and information to potential homebuyers on the [Internet].”9 However, in determining whether the services are related, it is not necessary that the services be similar or competitive in character to support a holding of likelihood of confusion; it is sufficient for such purposes that the services are related in some manner and/or that conditions and activities surrounding marketing of these services are such that they would or could be encountered by same persons under circumstances that could, because of 8 November 18, 2015 Office Action. 9 Applicant’s Brief, p. 15 (6 TTABVUE 16). Serial No. 86391941 - 11 - similarities of marks used with them, give rise to the mistaken belief that they originate from or are in some way associated with the same producer. Coach Servs., Inc. v. Triumph Learning LLC, 101 USPQ2d at 1722. That is precisely what is happening here. Real estate agencies/property management companies are providing information over the Internet in the field of real estate sales and property management. In view of the foregoing, we find that the services are related. C. Established, likely-to-continue channels of trade. The channels of trade factor concerns how and to whom the respective services are marketed. See Jeanne-Marc, Inc. v. Cluett, Peabody & Co., 221 USPQ 58, 61 (TTAB 1984) (“there is an overlap in the classes of purchaser since the same customers may purchase any or all of the items of goods involved herein.”); see also Quadrex Corp. v. Inficon Leybold-Heracus, Inc., 228 USPQ 300, 302 (TTAB 1985) (“the purpose for which each [product] is used might well be offer different results sought by the same individual, company or industry.”). As shown by the websites submitted by the Trademark Examining Attorney, real estate agencies and property management companies use their websites to provide instructive information to prospective clients. Thus, Applicant’s real estate and property management services are directed to some of the same consumers as Registrant’s “providing an interactive website featuring specific news and instructive information on the process of home purchasing, selling, renting, and leasing”; that is, consumers educating themselves in preparation to buy, sell, rent or lease property. Serial No. 86391941 - 12 - As noted in the previous section, Applicant uses its website to market its real estate agency services and property management services, as well as providing instructive information to prospective clients. In view of the foregoing, we find that the services move in the same channels of trade and are provided to some of the same consumers. D. The conditions under which and buyers to whom sales are made, i.e., “impulse” vs. careful, sophisticated purchasing. Applicant argues that the relevant consumers are “sophisticated” because they “want to purchase and lease real estate” and, therefore, they “exercise sufficient care in the purchase of the respective goods or services that clearly would minimize any potential of a likelihood of confusion as between respective trademarks.”10 As we pointed out above, not every person selling, buying, renting or leasing a home is a knowledgeable and careful consumer; rather, there is a broad range of consumers who exercise a wide degree of purchaser care. Nevertheless, we acknowledge that buying, selling, renting or leasing a home can be an unusual and complex transaction, involving knowledgeable sales persons, and consumers with a reasonably focused need. Accordingly, this is a factor that weighs against finding a likelihood of confusion. E. Absence of any actual confusion. Applicant argues that there is no evidence that there has been any actual confusion between Applicant’s services and Registrant’s services.11 The 10 Applicant’s Brief, pp. 17-18 (6 TTABVUE 18-19). 11 Applicant’s Brief, p. 18 (6 TTABVUE 19). Serial No. 86391941 - 13 - contemporaneous use of Applicant’s mark and Registrant’s mark since June 2014, Applicant’s claimed date of first use, is entitled to little weight. The Federal Circuit has addressed the question of the weight to be given to an assertion of no actual confusion by an applicant in an ex parte proceeding: With regard to the seventh DuPont factor, we agree with the Board that Majestic’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett-Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) (stating that self-serving testimony of appellant's corporate president's unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion). A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, [citation omitted], especially in an ex parte context. Majestic Distilling, 65 USPQ2d at 1205; see also In re Integrated Embedded, 120 USPQ2d 1504, 1515 (TTAB 2016). Accordingly, while examples of actual confusion may point toward a finding of a likelihood of confusion, an absence of such evidence is not compelling in support of a finding of no likelihood of confusion. Thus, we cannot conclude from the lack of instances of actual confusion that confusion is not likely to occur. In any event, this record is devoid of any probative evidence relating to the extent of use of Applicant’s and Registrant’s marks and, thus, whether there have been meaningful opportunities for instances of actual confusion to have occurred in the marketplace. See Cunningham v. Laser Golf Corp., 55 USPQ2d at 1847; Gillette Canada Inc. v. Ranir Corp., 23 USPQ2d 1768, 1774 (TTAB 1992). Serial No. 86391941 - 14 - Accordingly, the duPont factor of the length of time during and conditions under which there has been contemporaneous use without evidence of actual confusion is considered neutral. F. Balancing the factors. Although consumers in the market for buying, selling, renting and/or leasing real estate may exercise a high degree of purchaser care, we find that this duPont factor does not outweighs the similarity of the marks, the similarity of the services and the facts that the services move in the same channels of trade and are sold to some of the same classes of consumers. Accordingly, we find that Applicant’s mark FRONT DOOR PROPERTIES for “commercial and residential real estate agency services; real estate listing; real estate services, namely, property management services for condominium associations, homeowner associations and apartment buildings” is likely to cause confusion with the registered mark FRONTDOOR for “information services provided via a global computer network, namely, providing an interactive website featuring specific news and instructive information on the process of home purchasing, selling, renting, and leasing.” Our decision is supported by those cases which hold that purchaser care does not always assure an absence of confusion. See Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846; In re Research and Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (citing Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA 1970)); Hydra Mac, Inc. v. Mack Trucks, Inc., 507 F.2d 1399, 184 USPQ 351 (CCPA 1975). Serial No. 86391941 - 15 - Decision: The refusal to register Applicant’s mark FRONT DOOR PROPERTIES is affirmed.