FHQ Holdings LP

Trademark Trial and Appeal Board

Apr 5, 2021

88244353 (T.T.A.B. Apr. 5, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 5, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re FHQ Holdings LP
_____

Serial No. 88244353
_____

Elisabeth A. Evert of Hitchcock Evert LLP,
for FHQ Holdings LP.
Ty Murray, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Zervas, Mermelstein, and Johnson,
Administrative Trademark Judges.

Opinion by Johnson, Administrative Trademark Judge:
I. Background
FHQ Holdings LP (“Applicant”) seeks registration on the Principal Register of the
mark FIELDS, in standard characters (“Applicant’s Mark”), for various services in
International Classes 35, 36, 37, 41, and 43.1

1 Application Serial No. 88244353 filed on December 28, 2018 under Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), based on Applicant’s allegation of a bona fide intent to
use the mark in commerce.
Citations to the record or briefs are to the publicly available documents in TTABVUE, the
Board’s electronic docketing system. See, e.g., Turdin v. Trilobite, Ltd., 109 USPQ2d 1473,
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The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), in part, of Applicant’s services in International
Class 35:
Advertising and business management services of
commercial real estate developments, namely, promoting
the services of banks, hotels, retailers, businesses,
restaurants, bars and music venues via the Internet and
through the distribution of printed and audio promotional
materials and by rendering sales promotion advice;2
and of Applicant’s services in International Class 36:
Commercial real estate services, namely, listing, leasing
and managing office buildings, apartments,
condominiums, music venues, and real estate leased to
banks, retailers, businesses, restaurants and bars;
financial services, namely, real estate brokerage for office
buildings, apartments, condominiums, music venues and
real estate leased to banks, retailers, businesses,
restaurants and bars;

1476 n.6 (TTAB 2014). The number preceding “TTABVUE” corresponds to the docket entry
number; the number(s) following “TTABVUE” refer to the page number(s) of that particular
docket entry, if applicable. Citations to the application record are to pages in the Trademark
Status and Document Retrieval (TSDR) database of the United States Patent and Trademark
Office (USPTO). All citations to documents contained in the TSDR database are to the
downloadable .pdf versions of the documents in the USPTO TTABVUE Case Viewer.
2 Applicant’s International Class 35 identification of services also includes “providing
facilities for business meetings, trade exhibitions and business conferences.” Although
initially included in the refusal to register, the refusal was withdrawn with respect to these
goods in the Examining Attorney’s Brief. See Examining Attorney’s Appeal Brief,
15 TTABVUE 3, fn.1. So, the services “providing facilities for business meetings, trade
exhibitions and business conferences” are not included in this appeal.
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on the ground that Applicant’s Mark, as applied to these services identified in the
application, so resembles the Registered Mark, FIELDS (in standard characters), in
International Class 35,3 for:
Distribution of customized promotional products for
advertising purposes; Preparing promotional products and
merchandising material for others; Specialty
merchandising services, namely, promoting the goods and
services of others through the distribution of customized
advertising materials, namely, adhesive notes, adhesive
flags, pens, pencils, markers, pen holders, lanyards, bag
tags, tote bags, pouches, identification badge holders,
wristbands, sunscreen, sanitizer, sunglasses, safety
glasses, eyewear retainers, optical cases, compasses,
cutting tools, leashes, badge reels, binoculars, pedometers,
key rings, lights, die cast novelties, business card holders,
desk clocks, coasters, calendars, memo pads, memo pad
holders, mouse pads, office novelties and sculptures;
Electronic catalog services featuring customizable
promotional products, namely, adhesive notes, adhesive
flags, pens, pencils, markers, pen holders, lanyards, bag
tags, tote bags, pouches, identification badge holders,
wristbands, sunscreen, sanitizer, sunglasses, safety
glasses, eyewear retainers, optical cases, compasses,
cutting tools, leashes, badge reels, binoculars, pedometers,
key rings, lights, die cast novelties, business card holders,
desk clocks, coasters, calendars, memo pads, memo pad
holders, mouse pads, office novelties and sculptures;
and the Registered Mark, FIELDS (in standard characters), for “real estate
brokerage” in International Class 36,4 as to be likely to cause confusion.

3 Registration No. 3,662,589, issued August 4, 2009 (hereinafter the “’589 Registration”).
Combined declaration under Trademark Act Sections 8 and 15, 15 U.S.C. §§ 1058 and 1065,
accepted and acknowledged on Sept. 8, 2014 and maintained on April 25, 2020.
4 Registration No. 5,359,564, issued December 19, 2017 (hereinafter the “’564 Registration”).
The Examining Attorney previously stated that the ‘589 and the ‘564 Registrations are owned
by the same entity. Sept. 8, 2020 Request for Reconsideration After Final Action Denied,
11 TTABVUE 3. They are not. The Examining Attorney now withdraws this statement.
Examining Attorney’s Appeal Brief, 15 TTABVUE 5.
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When the refusal was made final, Applicant appealed and requested
reconsideration. After the Examining Attorney denied the request for
reconsideration, the appeal resumed. We affirm the refusal to register.
II. Likelihood of Confusion—Applicable Law
We base our determination of likelihood of confusion under Trademark Act Section
2(d) on an analysis of all of the probative facts in evidence that are relevant to the
factors enunciated in 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
Indus., Inc., 575 U.S. 138, 113 USPQ2d 2045, 2049 (2015)); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). We must
consider each DuPont factor for which there is evidence and argument. See, e.g.,
In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019).
However, “each case must be decided on its own facts and the differences are often
subtle ones.” Indus. Nucleonics Corp. v. Hinde, 475 F.2d 1197, 177 USPQ 386, 387
(CCPA 1973).
In applying the DuPont factors, we bear in mind the fundamental purposes
underlying Trademark Act Section 2(d), which are to prevent confusion as to source
and to protect registrants from damage caused by registration of confusingly similar
marks. Park ‘N Fly, Inc. v. Dollar Park & Fly, Inc., 469 U.S. 189, 224 USPQ 327, 331
(1985); Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159, 34 USPQ2d 1161, 1163
(1995); DuPont, 177 USPQ at 566.
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Varying weights may be assigned to the various DuPont factors depending on the
evidence presented. See Citigroup Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344,
98 USPQ2d 1253, 1260 (Fed. Cir. 2011); In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“[T]he various evidentiary factors may play
more or less weighty roles in any particular determination.”). Two key considerations
are the similarities between the marks and the relatedness of the goods. See
In re i.am.symbolic, LLC, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir. 2017)
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002) (“The likelihood of confusion analysis considers all DuPont
factors for which there is record evidence but ‘may focus … on dispositive factors,
such as similarity of the marks and relatedness of the goods.’”)).
III. Likelihood of Confusion – Analysis
We now consider the arguments of Applicant and the Examining Attorney, the
applicable law, and the evidence of record. The likelihood of confusion factors
Applicant and the Examining Attorney discussed are the similarity or dissimilarity
of Applicant’s and Registrants’ FIELDS marks, the relatedness of the services
associated with the respective marks, the channels of trade, the conditions under
which the services are likely to be purchased, and the sophistication of the
purchasers. We discuss these factors below.
A. The Similarity or Dissimilarity of the Marks
Under the first DuPont factor, we determine the similarity or dissimilarity of
Applicant’s and Registrants’ marks in their entireties, taking into account their
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appearance, sound, connotation, and commercial impression. DuPont, 177 USPQ at
567; In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1048
(Fed. Cir. 2018).
It is undisputed that Applicant’s Mark, FIELDS, is identical to the FIELDS marks
of the ’589 Registration and the ’564 Registration; applicant does not argue to the
contrary. So the first DuPont factor weighs heavily in favor of a finding of likelihood
of confusion. See In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ
1289, 1290 (Fed. Cir. 1984) (“This factor weighs heavily against applicant, as the two
word marks are identical … .”).
B. The Similarity or Dissimilarity and Nature of the Services
The second DuPont factor concerns the “similarity or dissimilarity and nature of
the goods or services as described in an application or registration.”
When analyzing the second DuPont factor, we look to the identifications of services
in the application and cited registration. Stone Lion Capital Partners v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); see Octocom Sys., Inc.
v. Houston Comput. Servs. 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 [services] set forth in the
application regardless of what the record may reveal as to the particular nature of an
applicant’s [services], the particular channels of trade or the class of purchasers to
which sales of the [services] are directed.”). The services do not have to be identical
or even competitive in order to find that there is a likelihood of confusion. In re Iolo
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Techs., LLC, 95 USPQ2d 1498, 1499 (TTAB 2010); In re G.B.I. Tile & Stone, Inc., 92
USPQ2d 1366, 1368 (TTAB 2009). The issue is not whether the services will be
confused with each other, but rather whether the public will be confused as to their
source. See Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898
(Fed. Cir. 2000) (“[E]ven if the [services] in question are different from, and thus not
related to, one another in kind, the same [services] can be related in the mind of the
consuming public as to the origin of the [services]. It is this sense of relatedness that
matters in the likelihood of confusion analysis.”). It is sufficient that the services of
the applicant and the registrant are related in some manner or that the conditions
surrounding their marketing are such that they are likely to be encountered by the
same persons under circumstances that, because of the marks used in connection
therewith, would lead to the mistaken belief that they originate from the same source.
See, e.g., Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d
1713, 1722 (Fed. Cir. 2012) (citation omitted); On-Line Careline Inc. v. America
Online Inc., 229 F.3d 1080, 56 USPQ2d 1471, 1475 (Fed. Cir. 2000). Where, as here,
the marks of the respective parties are identical, the relationship between the
services need not be as close to support a finding of likelihood of confusion as would
be required if there were differences between the marks. In re Shell Oil, 26 USPQ2d
at 1689; In re Iolo Techs., 95 USPQ2d at 1499.
Evidence of relatedness may include pages from third-party websites showing that
the relevant services are used by purchasers for the same purpose; advertisements
showing that the relevant services are advertised together; or copies of use-based
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registrations of the same mark for both Applicant’s identified services and the
services listed in the cited registrations. See, e.g., In re Davia, 110 USPQ2d 1810,
1817 (TTAB 2014) (finding pepper sauce and agave related where evidence showed
both were used for the same purpose in the same recipes because consumers were
likely to purchase the products at the same time and in the same stores).
1. Relatedness with the ‘589 Registration
The Examining Attorney argues that the services offered under Applicant’s Mark
and the ‘589 Registration are related. The ‘589 Registration reads:
Distribution of customized promotional products for
advertising purposes; Preparing promotional
products and merchandising material for others;
Specialty merchandising services, namely, promoting the
goods and services of others through the
distribution of customized advertising materials ,
namely, adhesive notes, adhesive flags, pens, pencils,
markers, pen holders, lanyards, bag tags, tote bags,
pouches, identification badge holders, wristbands,
sunscreen, sanitizer, sunglasses, safety glasses, eyewear
retainers, optical cases, compasses, cutting tools, leashes,
badge reels, binoculars, pedometers, key rings, lights, die
cast novelties, business card holders, desk clocks, coasters,
calendars, memo pads, memo pad holders, mouse pads,
office novelties and sculptures; Electronic catalog services
featuring customizable promotional products, namely,
adhesive notes, adhesive flags, pens, pencils, markers, pen
holders, lanyards, bag tags, tote bags, pouches,
identification badge holders, wristbands, sunscreen,
sanitizer, sunglasses, safety glasses, eyewear retainers,
optical cases, compasses, cutting tools, leashes, badge
reels, binoculars, pedometers, key rings, lights, die cast
novelties, business card holders, desk clocks, coasters,
calendars, memo pads, memo pad holders, mouse pads,
office novelties and sculptures.
(emphasis added). Such language, the Examining Attorney posits, “presumably
encompasses all services of the type described, including applicant’s more narrow
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advertising and distribution of promotional materials for commercial real estate
developments.”5 “Moreover, applicant’s other services, namely, its promotional
services … are broadly identified and also overlap with registrant’s distribution and
preparation of promotional materials, because applicant’s promotional services could
include preparing promotional materials for consumers.”6
For the same reasons, we agree that Applicant’s services in class 35 overlap with
Registrant’s services. We also note that the Examining Attorney made of record pages
from several third-party Internet websites, listed below, to demonstrate that the class
35 services claimed by Applicant may derive from the same source under the same
mark.7 See In re Detroit Athletic Co., 128 USPQ2d at 1051 (relatedness supported by
evidence that third parties sell both types of goods under same mark, showing that
“consumers are accustomed to seeing a single mark associated with a source that sells
both.”).
 https://www.allegramarketingprint.com/
Allegra is an advertising and marketing firm that produces, provides, and
distributes digital advertising, including paid social advertising, pay per click and
display advertising, as well as direct mail, and printing of direct mail for advertising
and marketing purposes.
 https://www.appleprinting.com/

5 Examining Attorney’s Appeal Brief, 15 TTABVUE 9.
6 Id.
7 Id. at 9-11; Sept. 8, 2020 Request for Reconsideration After Final Action Denied, pp. 6-7.
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Apple Printing & Advertising Specialties is a “full-service printing and
promotional products company” which offers printing services such as brochures,
flyers, signs, banners and business cards, as well as customization of promotional
products, such as apparel, totes, drinkware, USB drives and trade show giveaways.
 https://hfbadvertising.com/
HFB Advertising is an advertising design agency which offers advertising, logo,
design, graphic design, web design, digital marketing, promotional products,
printing, direct mail, and other services.
 https://www.laneprint.com/
Lane Printing and Advertising is a firm which offers printing, creative services,
signage, digital output printing, direct mail services, promotional services, and
advertising and event planning.
 https://www.primeadvertising.com/
Prime Advertising is a full-service marketing agency offering campaigns for local,
national, and international companies, organizations, and non-profits. Prime offers
web, multimedia, print, and community marketing.
 https://salkmarketing.com
Salk Marketing is a firm that creates and distributes promotional products, and
offers social media marketing, marketing consultation services, e-mail marketing
management, shipping and ordering services, printing and distribution of direct mail .
In turn, Applicant contends that its class 35 services and the services of the ‘589
Registration are distinct in that the services of the latter concerns “inexpensive
promotional products—for example, lanyards, pens, wristbands, and other office
Serial No. 88244353

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products;”8 that Applicant does not offer, or intend to offer, such goods;9 and that the
websites proffered by the Examining Attorney do not show services similar to
Applicant’s services.10
Applicant’s arguments are unavailing. We must consider Registrant’s services as
described in the registration and we cannot read limitations into them. See
Hewlett- Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004
(Fed. Cir. 2002); Octocom Sys., 16 USPQ2d at 1788. “[D]istribution of customized
promotional products for advertising purposes” and “preparing promotional products
and merchandising material for others” as stated the ‘589 Registration are broadly
described, and there is no limitation as to the nature or type of services offered; thus,
it is presumed that the ‘589 Registration encompasses all services of the type
described. See In re Linkvest S.A., 24 USPQ2d 1716, 1716 (TTAB 1992). Furthermore,
we find that the Examining Attorney’s third-party website evidence plainly shows
that the same entity often prepares promotional products and merchandising
materials, distributes customized promotional products and customized advertising
materials, and offers overall promotional, or marketing, services, all under the same
mark.
Altogether, we find that Applicant’s services and the services of the ‘589
Registration for FIELDS overlap.

8 Applicant’s Appeal Brief, 13 TTABVUE 8.
9 Id.
10 Applicant’s Reply Brief, 16 TTABVUE 3-4.
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2. Relatedness with the ‘564 Registration
The Examining Attorney also asserts that the services offered under the ‘564
Registration and Applicant’s Mark are related because Applicant’s “[c]ommercial real
estate services, namely, listing, leasing and managing office buildings, apartments,
condominiums, music venues, and real estate leased to banks, retailers, businesses,
restaurants and bars; financial services, namely, real estate brokerage for office
buildings, apartments, condominiums, music venues and real estate leased to banks,
retailers, businesses, restaurants and bars,” is fully subsumed by Registrant’s “real
estate brokerage.” Applicant contends that these services are distinct, inasmuch as
Registrant offers “traditional real estate brokerage [services] … in the Chicago
area”11 under its mark, whereas Applicant’s Mark is “tied directly to the upscale
mixed use development that it is in the process of bringing to the Dallas-Fort Worth
area. … [O]ffice buildings, apartments, condominiums, music venues, and real estate
leased to banks, retailers, businesses, restaurants, and bars—in Applicant’s own
Fields community in North Texas.”12 We agree that Applicant’s class 36 services and
Registrant’s services overlap.
To demonstrate that Applicant’s and Registrant’s services can emanate from a
single source, the Examining Attorney made of record the following nine third-party

11 Applicant’s Appeal Brief, 13 TTABVUE 11.
12 Id.
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registrations,13 revealing both commercial real estate services and a variety of other
real estate services being offered under the same mark:
Reg. No. Mark Relevant Services
5,200,641

Commercial real estate services; real estate
brokerage; real estate listings; leasing and
management of commercial property,
offices, and office space; residential real
estate agency services; real estate
brokerage services specializing in
restaurants and other food service related
businesses; real estate management of
residential and commercial real estate
(International Class 36)
5,240,779

Commercial and residential real estate
agency services; real estate brokerage;
classified real estate listings of apartment
rentals and housing rentals; real estate
management services; real estate multiple
listing services; providing real estate
listings via the Internet; real estate
services, namely, rental, brokerage, leasing
and management of commercial property,
offices and office space
(International Class 36)
5,436,404

Commercial and residential real estate
agency services; real estate brokerage; real
estate brokerage services specializing in
restaurants and other food service related
businesses; real estate services, namely,
condominium management services; real
estate services, namely, leasing and
management for others of residential
condominiums located within hotel
developments; real estate services, namely,
rental, brokerage, leasing and management
of commercial property, offices and office
space; financial services, namely, real

13 Examining Attorney’s Appeal Brief, 15 TTABVUE 19-22; see also March 22, 2019 Office
Action at pp. 20-23, 27-29, 30-37, 41-44, and Feb. 3, 2020 Final Office Action at pp. 8-10,
28- 31, 47-49, 50-52.
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Reg. No. Mark Relevant Services
estate note brokerage; providing real estate
listings via the Internet
(International Class 36)
5,636,032 WE’LL TREAT YOU
LIKE ROYALTY FOR
YOUR LOYALTY
Commercial and residential real estate
agency services; real estate brokerage; real
estate listing services for residential and
commercial property sales and rentals;
leasing of real estate; real estate brokerage
services specializing in restaurants and
other food service related businesses; real
estate management services for others of
residential and commercial real estate
(International Class 36)
5,673,014 SELLER BAILOUT Commercial and residential real estate
agency services; real estate brokerage; real
estate brokerage services specializing in
restaurants and other food service related
businesses; providing real estate listings
via the Internet; real estate services,
namely, leasing and management for others
of residential condominiums located within
hotel developments; financial services,
namely, real estate note brokerage
(International Class 36)
2,512,524

Commercial and residential real estate
agency services, namely, brokerage; real
estate brokerage; leasing of real estate;
listing and real estate management;
property management services for
corporate and business facilities
(International Class 36)
5,895,204

Commercial and residential real estate
agency services; real estate brokerage; real
estate brokerage of residential and
commercial real estate; real estate
brokerage services specializing in
restaurants and other food service related
businesses; real estate listing; real estate
management of residential and commercial
real estate (International Class 36)

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Reg. No. Mark Relevant Services
4,081,450 THE LOFT
EXCHANGE
Real estate agency services for buyers and
sellers of commercial and residential real
estate; real estate brokerage services;
provide consumers with listing information
on residential and commercial real estate
for lease and for sale
(International Class 36)
3,940,897 ELEVATE REAL
ESTATE
Real estate brokerage; residential real
estate agency services; commercial real
estate agency; real estate agency services;
residential real estate agency services;
commercial real estate agency services
(International Class 36)

The Examining Attorney also made of record pages from the following third-party
Internet websites:14
 http://retailsolutionsre.com/
Resolut RE of Austin, Texas, which offers commercial property listings, marketing
services, and real estate brokerage services.
 http://www.mcginnisrealty.com/
McGinnis Commercial Real Estate Company of Delaware, which displays
commercial real estate, farms and land listings, residential properties, property
management, and real estate brokerage.
 http://www.lubbockwestar.com/
Westar Residential Realty of Lubbock, Texas, which offers residential, farm, and
commercial properties for sale or lease; and Westar Commercial Realty of Lubbock,

14 Examining Attorney’s Appeal Brief, 15 TTABVUE 17-18; Sept. 8, 2020 Request for
Reconsideration After Final Action Denied, pp. 9-10.
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Texas, which offers a wide variety of real estate services, including real estate
brokerage services, property management, realty advisory services, and commercial
real estate services.
 https://harrisonpearson.com/
Harrison-Pearson Real Estate of Austin, Texas, which offers commercial and
residential real estate listings, property management services, and real estate
brokerage and leasing services.
 https://antonoff.com/
Antonoff & Co. and Antonoff & Co. Brokerage Inc. of Denver, Colorado, which offer
commercial real estate services, real estate development services, retail leasing
services, and representation of parties in residential bed and breakfast transactions.
 https://aquilacommercial.com/
Aquila Commercial, a full-service commercial real estate firm and brokerage
serving owners, tenants, developers, and investors in the Austin, Texas area.
 https://www.radiusgroup.com/
Radius Commercial Real Estate, which offers “custom brokerage solutions to the
broader Central Coast and Ventura County [California] markets,” including
commercial sales, commercial leasing, agricultural land sales, multifamily real estate
property sales and investing.
 https://southgaterealtyllc.com/
Southgate Realty, LLC, which offers multifamily real estate property
management, brokerage, and advisory services; commercial land sale and
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development services; and commercial real estate property management services in
South Mississippi.
 https://tartanproperties.com/
Tartan Properties of Alexandria, Virginia, which offers commercial real estate
brokerage services and consulting services, focused on office, industrial, and flex
properties in Washington, D.C. and Northern Virginia.
Although the third-party registrations are not evidence that they are actually in
use or that the public is familiar with them, particularly in the absence of any
evidence showing the extent of their use, we weigh whatever probative value they
have in conjunction with the third-party Internet website evidence submitted by the
Examining Attorney. See Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005)
(citation omitted); Smith Bros. Mfg. Co. v. Stone Mfg. Co., 476 F.2d 1004,
177 USPQ 462, 462-63 (CCPA 1973); In re Mw. Gaming & Entm’t, 106 USPQ2d 1163,
1167 n.5 (TTAB 2013); TRADEMARK MANUAL OF EXAMINING PROCEDURE
(TMEP) § 1207.01(d)(iii) (Oct. 2018). On balance, we find that the “real estate
brokerage services” of the ‘564 Registration for FIELDS encompass Applicant’s
commercial real estate services offered under its FIELDS mark; in other words, the
services overlap and are legally identical. In addition, we find all of the
aforementioned third-party evidence offered by the Examining Attorney to be highly
probative of relatedness. Therefore, the services are related.
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Overall, this DuPont factor weighs in favor of a finding of likelihood of confusion
with respect to both the ‘589 and ‘564 Registrations.
C. Channels of Trade
There are no limitations as to trade channels or classes of purchasers in the
application or the cited registrations, and the services are encompassed within the
other and hence, overlap, so it is presumed that the application and registrations
encompass all services of the type described, that the services move in all normal
trade channels for those services, and that the services are available to all classes of
purchasers. In re Linkvest, 24 USPQ2d at 1716; In re Elbaum, 211 USPQ 639, 640
(TTAB 1981). We find that the evidence proffered by the Examining Attorney,
discussed above, shows that Applicant’s services in classes 35 and 36 travel in the
same trade channels with the services recited in the ‘589 and ‘564 Registrations,
respectively. This DuPont factor also weighs in favor of a finding of likelihood of
confusion.
D. Degree of Consumer Care with Respect to Applicant’s Class 36
Services
The last DuPont factor we consider pertains to the conditions under which the
services are likely to be purchased, e.g., whether on impulse or after careful
consideration, as well as the degree, if any, of sophistication of the consumers.
Purchaser sophistication or degree of care may tend to minimize likelihood of
confusion. Conversely, impulse purchases of inexpensive items may tend to have the
opposite effect. Palm Bay Imps., 73 USPQ2d at 1695. Nevertheless, the fact that
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purchasers are sophisticated or knowledgeable in a particular field does not
necessarily mean that they are sophisticated or knowledgeable in the field of
trademarks or immune from source confusion. See In re Cynosure, Inc., 90 USPQ2d
1644, 1647 (TTAB 2009).
Applicant presumes that “[c]onsumers of real estate services are likely to be
extraordinarily careful. … [A] home is typically a consumer’s largest financial
investment and biggest asset. Registrant’s customers will take care in selecting a real
estate broker and are unlikely to confuse Registrant [of the ‘564 Registration] with
Applicant.”15 In support of its position, Applicant proffers pages from Registrant’s
website that list the geographic areas in which Registrant offers its services,16 one of
Registrant’s residential real estate listings showing a 2,900 square foot home offered
for $849,900,17 as well as a December 2018 press release from the Professional
Golfers’ Association of America (“PGA”) detailing the PGA’s plans to move its
headquarters from South Florida to Applicant’s proposed 600 acre mixed-use
development in North Texas featuring two championship golf courses, a clubhouse,
class AA office space, an upscale hotel resort and conference center, a “technologically
advanced retail village,” parks, open space, and trails.18

15 Applicant’s Appeal Brief, 13 TTABVUE 11.
16 Id. at 23-28 (Ex. 6); Aug. 3, 2020 Request For Reconsideration, pp. 8-12. If Applicant is
suggesting that the geographic areas in which Registrant operates is relevant, Applicant is
incorrect; an unrestricted registration is nationwide in scope. See Giant Food, Inc. v. Nation's
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983); see also Trademark Act
Section 7(b), 15 U.S.C. § 1057(b).
17 Id. at 29 (Ex. 7); Sept. 9, 2019 Response to Office Action, p. 17.
18 Id. at 30-32 (Ex. 8); Aug. 3, 2020 Request For Reconsideration, pp. 13-15.
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From this evidence, we conclude that Applicant’s commercial real estate services
and the ‘564 Registrant’s “real estate brokerage services” are not average consumer
services, and that the average purchaser would use elevated care in his or her
purchases due to the cost of the services, their nature, and the complexity of modern
real estate transactions. Again, however, we acknowledge that even sophisticated
purchasers are not immune from source confusion, especially where, as here, there
are identical marks and overlapping services. See In re i.am.symbolic, 123 USPQ2d
at 1413 (citing In re Research & Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50
(Fed. Cir. 1986)); see also Stone Lion Capital, 110 USPQ2d at 1163-64; In re Shell Oil,
26 USPQ2d at 1690.
This DuPont factor weighs against a finding of likelihood of confusion.
IV. Conclusion
After considering all of the arguments and the evidence of record as they pertain
to the relevant DuPont factors, we find that confusion is likely between Applicant’s
Mark and both of the cited registrations. The marks are identical, the services
overlap, and the channels of trade overlap. And even though consumers would have
some sophistication and likely exercise a greater degree of care when purchasing
Applicant’s commercial real estate services and the ‘564 Registrant’s real estate
brokerage services (compared with the degree of care consumers would exercise when
purchasing more typical, or common, real estate services), overall, we conclude that
confusion would be likely between Applicant’s FIELDS mark for its services in classes
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35 and 36, and the ‘589 and ‘564 FIELDS Registrations for their respective services
in classes 35 and 36.
Decision: We affirm the partial refusal to register Applicant’s Mark in
International Class 35 and the full refusal to register Applicant’s Mark in
International Class 36.
The application will proceed to publication for the services in International
Classes 37, 41, and 43, and the remaining services which were not the subject of the
Examining Attorney’s International Class 35 refusal: “providing facilities for
business meetings, trade exhibitions and business conferences.”