Homefirst LLC

Trademark Trial and Appeal Board

May 25, 2007

No. 78294792 (T.T.A.B. May. 25, 2007)

Mailed: May 25, 2007
GDH/gdh

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Homefirst LLC
________

Serial No. 78294792
Serial No. 78294797
_______

Julie A. Greenberg of Gifford, Krass, Groh, Sprinkle, Anderson &
Citkowski, P.C. for Homefirst LLC.

Tricia Sonneborn, Trademark Examining Attorney, Law Office 110
(Chris A. F. Pedersen, Managing Attorney).
_______

Before Hohein, Cataldo and Wellington, Administrative Trademark
Judges.

Opinion by Hohein, Administrative Trademark Judge:

Homefirst LLC has filed applications to register in
standard character form on the Principal Register the marks
"HOMEFIRST"1 and "HOMEFIRST CERTIFIED"2 for, in each instance,
both "real estate management of residential communities" in
International Class 36 and "land development and construction
services, namely, planning, development and construction of
residential communities" in International Class 37.

1 Ser. No. 78294792, filed on September 2, 2003, which is based on an
allegation of a bona fide intention to use the mark in commerce.

2 Ser. No. 78294797, filed on September 2, 2003, which is based on an
allegation of a bona fide intention to use the mark in commerce. The
word "CERTIFIED" is disclaimed.

THIS OPINION IS
NOT A PRECEDENT
OF THE TTAB
Ser. Nos. 78294792 and 78294797
2
Registration has been finally refused in each case
under Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on
the ground that applicant's marks, when applied to its services,
so resemble the mark "HOME FIRST AGENCY, INC." and design, as
reproduced below,

which is registered on the Principal Register for "insurance
agency services in the field of manufactured housing and
providing extended warranty services to buyers of manufactured
housing" in International Class 36,3 as to be likely to cause
confusion, mistake or deception.
Applicant, in each case, has appealed and briefs have
been filed. Because the issue of likelihood of confusion is
substantially the same in each instance, the appeals are being
treated in a single opinion. We affirm the refusal to register
in each case.
Our determination under Section 2(d) is based on an
analysis of all of the facts in evidence which are relevant to
the factors bearing on the issue of whether there is a likelihood
of confusion. See, e.g., In re Majestic Distilling Co., 315 F.3d

3 Reg. No. 2,916,932, issued on January 1, 2005, which sets forth a
date of first use anywhere and in commerce of September 2002. The
words "Agency, Inc." are disclaimed.

Ser. Nos. 78294792 and 78294797
3
1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003); and In re E. I. du
Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 568 (CCPA
1973). However, as indicated in Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976), in
any likelihood of confusion analysis, two key considerations are
the similarity of the services and the similarity of the marks.4
Turning first to consideration of the respective
services, applicant notes in each of its initial briefs that such
services are specifically different in that "the cited registrant
provides homeowners insurance, and the applicant provides
construction and real estate development services." Although
acknowledging that "the Examiner may be correct in taking the
position that these services can, in some instances, be
'related,' [by] using existing registrations as proof that some
third parties engage in both fields" (italics in original),
applicant asserts that "this expansive view of the field of
registrant's services" is not commiserate with what applicant
views as the weakness of registrant's mark, which applicant
maintains is "entitled to only a narrow scope of protection."
Applicant stresses that each of its marks "is for development of
residential communities, and does not cover insurance services;
[while the registrant's mark], in contrast, ... is for insurance
agency services, and does not cover construction and development
of residential communities." Thus, for applicant:

4 The court, in particular, pointed out that: "The fundamental inquiry
mandated by §2(d) goes to the cumulative effect of differences in the
essential characteristics of the [services or] goods and differences
in the marks."

Ser. Nos. 78294792 and 78294797
4
The bottom line is that the registrant
does not provide construction services under
... [its] mark, and ... is not entitled to
expand the scope of its mark to services that
it does not provide. In this case, the
relationship between Applicant's construction
and real estate development services and the
cited registrant's insurance agency services
are not close enough to conclude [that]
confusion is likely, particularly in view of
the substantial differences in the marks.
....

We agree with the Examining Attorney, however, that the
respective services have been shown to be sufficiently related
that, if offered under the same or similar marks, confusion would
be likely as to the source or sponsorship thereof. As the
Examining Attorney correctly points out in each of her briefs, it
is well established that services need not be identical or even
competitive in nature in order to support a finding of likelihood
of confusion. Instead, it is sufficient that the services are
related in some manner and/or that the circumstances surrounding
their marketing are such that they would be likely to be
encountered by the same persons under situations that would give
rise, because of the marks employed in connection therewith, to
the mistaken belief that they originate from or are in some way
associated with the same entity or provider. See, e.g., Monsanto
Co. v. Enviro-Chem Corp., 199 USPQ 590, 595-96 (TTAB 1978); and
In re International Telephone & Telegraph Corp., 197 USPQ 910,
911 (TTAB 1978). Furthermore, as the Examining Attorney also
properly notes, it is well settled that the issue of likelihood
of confusion is determined on the basis of the services as they
are respectively identified in the particular application and the
cited registration. See, e.g., Octocom Systems Inc. v. Houston
Ser. Nos. 78294792 and 78294797
5
Computer Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990); Canadian Imperial Bank of Commerce, N.A. v. Wells
Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16 (Fed. Cir.
1987); CBS Inc. v. Morrow, 708 F.2d 1579, 218 USPQ 198, 199 (Fed.
Cir. 1983); Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937,
940 (Fed. Cir. 1983); and Paula Payne Products Co. v. Johnson
Publishing Co., Inc., 473 F.2d 901, 177 USPQ 76, 77 (CCPA 1973).
In view thereof, the Examining Attorney persuasively
argues that (emphasis in original):
Here, applicant seeks registration of
its proposed mark[s] for "real estate
management of residential communities" and
"land development and construction services,
namely, planning, development and
construction of residential communities."
The registrant's mark is used in relation to
"insurance agency services in the field of
manufactured housing and providing extended
warranty services to buyers of manufactured
housing" (emphasis added). It is presumed
that applicant's services cover all types of
residential communities, including
manufactured housing communities.

In fact, applicant has admitted this
very important point. The examining attorney
attached two website excerpts to her June 2,
2005 Office action that concerned a
manufactured home community. The examining
attorney inquired whether the website
excerpts referred to applicant, and applicant
confirmed that they did refer to applicant's
manufactured home community. As such, the
registrant's insurance and extended warranty
services and applicant's real estate
management and planning, development and
construction services all concern
manufactured homes.

....

Further, it is interesting to point out
that applicant has not once mentioned that
the cited registrant provides more than just
Ser. Nos. 78294792 and 78294797
6
manufactured homeowners insurance under its
mark HOME FIRST AGENCY, INC. The registrant
also provides extended warranty services to
buyers of manufactured housing. This service
is not insignificant in solidifying the
relatedness of the ... [respective] services
and must not be overlooked. Rather, this
service further establishes the relatedness
of the services. A consumer familiar with
the registrant's homeowners insurance and
extended warranty services for buyers of
manufactured housing would likely be confused
and believe that applicant's planning,
development, construction and management of
residential manufactured housing communities
emanate from a single source.

The website excerpts referred to by Examining Attorney state, in
particular, that (emphasis in original):
We've raised the bar on manufactured home
living
A HomeFirst Certified Community isn't just a
place to live . . . it's a place to come
alive.
In addition to exquisite homes
constructed by some of the finest builders in
the country, residents enjoy a lifestyle
never before offered in a manufactured home
community.
All communities include 24-hour on-site
management, planned activities and
exceptional recreational facilities. ....

Furthermore, although curiously not even mentioned in
her briefs, the record reveals that as additional support for her
position, the Examining Attorney has submitted in each case
copies of several use-based third-party registrations for marks
which are registered for, inter alia, services encompassing the
same or similar services to those at issue herein in that they
respectively include the following recitations of services: (i)
"real estate management services" and "insurance agency ...
services"; (ii) "real estate management ... services" and
Ser. Nos. 78294792 and 78294797
7
"insurance agency services"; (iii) "real estate management,"
"land development services, namely, planning and laying out of
residential ... communities," "construction services, namely,
planning, laying out and custom construction of residential ...
communities" and "providing extended warranties on building
construction materials and services relating thereto"; (iv) "real
estate management/brokerage services," "real estate development
or land development services, namely, planning and laying out of
residential ... communities" and "insurance agencies in the
fields ... of ... owners and contractors liability"; (v) "real
estate development services, real estate management services" and
"insurance agency services"; (vi) "real estate management" and
"insurance agencies"; (vii) "management of residential real
estate properties" and "insurance agency services in the fields
of home, property and casualty, and life insurance"; (viii) "real
estate management services" and "insurance agency ... services";
and (ix) "real estate management services" and "insurance agency
[services]." Although such registrations are not evidence that
the marks shown therein are in use or that the public is familiar
with them, they nonetheless have some probative value to the
extent that they serve to suggest that the services listed
therein are of the kinds which may emanate from a single source.
See, e.g., In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d
1214, 1217-18 (TTAB 2001); In re Albert Trostel & Sons Co., 29
USPQ2d 1783, 1785-86 (TTAB 1993); and In re Mucky Duck Mustard
Co. Inc., 6 USPQ2d 1467, 1470 (TTAB 1988) at n. 6, aff’d as not
citable precedent, No. 88-1444 (Fed. Cir. Nov. 14, 1988).
Ser. Nos. 78294792 and 78294797
8
Applicant, by contrast, has notably offered no evidence to
suggest that its services are not commercially related to those
of the cited registrant.
Turning, therefore, to consideration of the marks at
issue, applicant argues that when considered in their entireties,
its marks are so dissimilar from registrant's mark in appearance,
sound, connotation and commercial impression as to preclude any
likelihood of confusion. Applicant observes, in particular, that
unlike its "HOMEFIRST" and "HOMEFIRST CERTIFIED" marks,
registrant's "HOME FIRST AGENCY, INC." and design mark features
"a distinctive drawing of a roof over the words, and contains the
important wording 'AGENCY, INC.' ... which itself highlights the
differences in the respective services." Specifically, applicant
maintains that, although disclaimed, the words "AGENCY, INC." in
registrant's mark "actually assist the consumer in distinguishing
the underlying services, and, if properly incorporated into the
analysis, would ... eliminate the likelihood of confusion"
inasmuch as "the term AGENCY connotes insurance services and does
not have an obvious meaning in connection with home construction
and real estate development services." Applicant also urges that
"it is not insignificant that rather than providing exclusive
rights to the typed words HOME FIRST, the [cited] registration is
much more limited in scope, granting instead exclusive rights to
the distinctive layout, in which the words are separated and
placed under a roof creating the image of a house."
Applicant, in such regard, further contends that the
Examining Attorney, by focusing only "on the element in common--
Ser. Nos. 78294792 and 78294797
9
the word HOMEFIRST [or the term HOME FIRST]," has "made a flawed
analysis under the well established anti-dissection rule of
trademark law, [as] specifically set forth in ... In re Hearst
Corp., 982 F.2d 493, 25 USPQ2d 1238 (Fed. Cir. 1992)," in that:
Under Hearst, any legitimate comparison
in the instant matter[s] between the cited
mark and Applicant's mark[s] must be based on
more than a mere comparison of the wording
HOMEFIRST [or HOME FIRST], for the reason
that the commercial impression of each of the
relevant marks derive[s], in significant
part, from elements which were disregarded by
the Examiner. By eliminating these
distinctive, and prominent elements from
consideration, the Examining Attorney has
violated the controlling rule in Hearst.

In addition, applicant asserts that in treating its
marks as being "confusingly similar to the cited mark, the
Examining Attorney attributed too much strength to the cited mark
when, "[i]n fact, the cited mark is comprised of extremely common
elements, and as such is properly appreciated as a weak mark."
As support for such assertion, applicant points to a "list of
over five hundred insurance marks on the PTO database, all of
which incorporate the descriptive term HOME in their marks," as
well as "a separate list of over five hundred marks using the
term FIRST for insurance services." According to applicant,
"[w]ith hundreds of users all using these terms for their
insurance services, it is unreasonable to presume that any
expectation exists in the consumers' minds that marks that
incorporate these terms are related" (italics in original).
Instead, applicant insists, it "is well established that when a
mark exists in a crowded field, such as the cited mark here, the
public is presumed to be able to distinguish it from other marks
Ser. Nos. 78294792 and 78294797
10
that have only slight differences," citing inter alia King Candy
Co. v. Eunice King's Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974), and Sure-Fit Products Co. v. Saltzson Drapery Co.,
254 F.2d 158, 117 USPQ 295 (CCPA 1958).
We concur with the Examining Attorney, however, that
the marks at issue overall are so similar that confusion is
likely. As the Examining Attorney properly observes in her
briefs, "when determining whether there is a likelihood of
confusion under Section 2(d), the question is not whether people
will confused the marks, but rather whether the marks will
confuse ... people into believing that the goods/services they
identify emanate from the same source," citing In re West Point-
Pepperell, Inc., 468 F.2d 200, 175 USPQ 558 (CCPA 1972). Thus,
as the Examining Attorney also correctly notes:
For that reason, the test of likelihood of
confusion is not whether the marks can be
distinguished when subjected to a side-by-
side comparison. The question is whether the
marks create the same overall commercial
impression. Visual Information Inst., Inc.
v. Vicon Indus. Inc., 209 USPQ 179 (TTAB
1980). The focus is on the recollection of
the average purchaser who normally retains a
general rather than specific impression of
trademarks. Chemetron Corp. v. Morris
Coupling & Clamp Co., 203 USPQ 537 (TTAB
1979); Sealed Air Corp. v. Scott Paper Co.,
190 USPQ 106 (TTAB 1975); TMEP §1207.01(b).

See also, Grandpa Pidgeon's of Missouri, Inc. v. Borgsmiller, 477
F.2d 586, 177 USPQ 573, 574 (CCPA 1973), and Envirotech Corp. v.
Solaron Corp., 211 USPQ 724, 733 (TTAB 1981).
Moreover, as the Examining Attorney accurately notes,
while the marks at issue must be considered in their entireties,
including any generic or descriptive words therein, our principal
Ser. Nos. 78294792 and 78294797
11
reviewing court in In re National Data Corp., 753 F.2d 1056, 224
USPQ 749, 751 (Fed. Cir. 1985), has indicated that (footnotes
omitted):
It follows from that principle that
likelihood of confusion cannot be predicated
on dissection of a mark, that is, on only
part of a mark. On the other hand, in
articulating reasons for reaching a
conclusion on the issue of [likelihood of]
confusion, there is nothing improper in
stating that, for rational reasons, more or
less weight has been given to a particular
feature of a mark, provided [that] the
ultimate conclusion rests on consideration of
the marks in their entireties. Indeed, this
type of analysis appears to be unavoidable.

That a particular feature is descriptive
or generic with respect to the involved ...
services is one commonly accepted rationale
for giving less weight to a portion of a mark
....

Thus, because disclaimed matter is often descriptive or generic,
the Examining Attorney properly observes that "[d]isclaimed
matter is typically less significant or less dominant" as an
element of a mark. Furthermore, she is also correct that "when a
mark consists of a word portion and a design portion, the word
portion is more likely to be impressed upon a purchaser's memory
and to be used in calling for the goods or services," citing In
re Appetito Provisions Co. Inc., 3 USPQ2d 1553 (TTAB 1987), and
Amoco Oil Co. v. Amerco, Inc., 192 USPQ 729 (TTAB 1976).
With the above principles in mind, it is clear that the
Examining Attorney, contrary to applicant's contention, has not
improperly dissected the marks at issue. Rather, we agree with
the Examining Attorney's analysis that, when considered in their
entireties, the dominant and distinguishing portions of the marks
Ser. Nos. 78294792 and 78294797
12
"HOMEFIRST CERTIFIED" and "HOME FIRST AGENCY, INC." and design
are, respectively, the terms "HOMEFIRST" and "HOME FIRST," which
are in turn identical to and substantially the same as the mark
"HOMEFIRST." As the Examining Attorney explained in her brief in
connection with applicant's application to register the mark
"HOMEFIRST CERTIFIED":
HOMEFIRST is the dominant portion of
applicant's mark due to its being combined
with the descriptive word CERTIFIED, which is
entitled to less weight. Turning to the
cited registration, it clearly consists of
two very large words followed by two very
small words. The large words are HOME FIRST,
whereas the small words are AGENCY, INC.. It
is quite obvious that the registrant wanted
to draw a marked distinction between the
dominant portion of its mark, HOME FIRST, and
the not so dominant portion of its mark,
AGENCY, INC.. Indeed, the registrant
disclaimed the generic phrase AGENCY, INC..

Size matters in this case. When viewing
the registrant's mark in its entirety, the
eye is immediately drawn to the large print
HOME FIRST and then to the small print
AGENCY, INC. and stylized roof [design].
.... In this instance, based on applicant's
positioning of the term HOMEFIRST and the
registrant's large print HOME FIRST, the
general recollection of the average purchaser
is the term HOMEFIRST/HOME FIRST and not the
distinguishing characteristics which may
arise when the marks are subjected to a side-
by-side comparison, such as the registrant's
use of a space between HOME and FIRST, the
use of generic/descriptive wording AGENCY
INC. and CERTIFIED, or the stylized roof
[design]. It is clear that the dominant
portion of both marks is HOMEFIRST/HOME
FIRST.

With respect to applicant's assertion that confusion is
not likely because the cited mark is weak, we note that aside
from the fact that mere lists of third-party registrations are
ordinarily insufficient to make such registrations properly of
Ser. Nos. 78294792 and 78294797
13
record,5 even if we accept applicant's assertion that the lists
it has provided demonstrate that there are "over five hundred
insurance marks on the PTO database, all of which incorporate the
descriptive term HOME in their marks" and "over five hundred
marks using the term FIRST for insurance services," it is well
settled that third-party registrations are not evidence of what
happens in the marketplace or that the purchasing public is
familiar with the use of the marks which are the subjects thereof
and has therefore learned to distinguish those marks by the
differences therein. See, e.g., National Aeronautics & Space
Administration v. Record Chemical Co., 185 USPQ 563, 567 (TTAB
1975). Such registrations therefore do not show that the subject
marks are actually being used, much less that the extent of their
use is and/or has been so great that customers have indeed become
accustomed to encountering the marks in the marketplace and will
differentiate among marks which incorporate the words "HOME" or
"FIRST" by other matter or elements therein. See, e.g., Smith
Brothers Manufacturing Co. v. Stone Manufacturing Co., 476 F.2d
1004, 177 USPQ 462, 463 (CCPA 1973); and AMF Inc. v. American
Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269 (CCPA
1973), in which the court indicated that:

5 Mere lists of third-party registrations ordinarily are insufficient
to make such registrations properly of record. The Board does not
take judicial notice of third-party registrations, see, e.g., In re
Duofold Inc., 184 USPQ 638, 640 (TTAB 1974), and thus the proper
procedure for making information concerning third-party registrations
of record is to submit either copies of the actual registrations or
the electronic equivalents thereof, i.e., printouts of the
registrations which have been taken from the U.S. Patent and Trademark
Office's own computerized database. See, e.g., In re Consolidated
Cigar Corp., 35 USPQ2d 1290, 1292 n. 3 (TTAB 1995); In re Smith &
Ser. Nos. 78294792 and 78294797
14
[L]ittle weight is to be given such
registrations in evaluating whether there is
likelihood of confusion. The existence of
these registrations is not evidence of what
happens in the market place or that customers
are familiar with them nor should the
existence on the register of confusingly
similar marks aid an applicant to register
another likely to cause confusion, mistake or
to deceive.

See also Olde Tyme Foods, Inc. v. Roundy's Inc., 961 F.2d 200, 22
USPQ2d 1542, 1545 (Fed. Cir. 1992) [third-party registrations
"may not be given any weight" (emphasis in original) as to the
strength of a mark]; and In re Hub Distributing, Inc., 218 USPQ
284, 285-86 (TTAB 1983). Applicant's contention, therefore, that
"[w]ith hundreds of users all using these terms for their
insurance services, it is unreasonable to presume that any
expectation exists in the consumers' minds that marks that
incorporate these terms are related" (italics in original) is
simply without any evidentiary foundation.
Moreover, to the extent that applicant may be trying to
rely upon its lists of various third-party registrations to show,
like dictionary definitions, that the cited registrant's mark is
weak in the sense that it must be considered highly suggestive of
the associated services, that such registrations, like dictionary
definitions, demonstrate that opposer's mark is weak in the sense
that it is highly suggestive of its goods, see, e.g., Tektronix,
Inc. v. Daktronics, Inc., 534 F.2d 915, 189 USPQ 693, 694-95
(CCPA 1976), the Examining Attorney persuasively states in each

Mehaffey, 31 USPQ2d 1531, 1532 n. 3 (TTAB 1994); and In re Melville
Corp., 18 USPQ2d 1386, 1388 n. 2 (TTAB 1991).

Ser. Nos. 78294792 and 78294797
15
of her briefs that, as to applicant's weak mark argument (italics
and underlining in originals):
This argument fails on multiple levels, the
most obvious of which is the fact that ...
[the cited registrant's] mark[, like both of
applicant's marks,] does not include either
the term HOME or FIRST [alone]. Instead, the
... marks at issue contain both the terms
HOME and FIRST. Not only that, but the marks
at issue contain both the terms HOME and
FIRST ... in the identical order. This
suggestive term (HOMEFIRST/HOME FIRST) is
found only three times in the entire [USPTO]
X-Search database for all classes. It is
revealing that applicant has applied for two
of them and the [cited] registrant owns the
third. Applicant's contention that the
[cited registrant's] mark is weak because it
contains either the word HOME or FIRST is
simply unsupported by the current state of
the register.

It is plain, therefore, that despite certain minor differences in
the marks at issue in that one of applicant's marks contains the
descriptive (and hence disclaimed) term "CERTIFIED" while the
cited registrant's mark includes the generic (and consequently
disclaimed) wording "AGENCY, INC.," along with a roof design
element, which is suggestive, like the word "HOME," of the
manufactured housing which its insurance agency and extended
warranty services cover, overall such marks are substantially
similar in appearance, sound, connotation and commercial
impression in view of the fact that applicant's "HOMEFIRST" and
"HOMEFIRST CERTIFIED" marks consist of or are dominated by the
term "HOMEFIRST," which is essentially identical to the dominant
and distinguishing "HOME FIRST" portion of the cited registrant's
"HOME FIRST AGENCY, INC." and design mark. The respective marks
are thus confusingly similar. See, e.g., In re Chatam
Ser. Nos. 78294792 and 78294797
16
International Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946-48 (Fed.
Cir. 2004).
We accordingly conclude that homeowners and prospective
home buyers, who are familiar or acquainted with registrant's
"HOME FIRST AGENCY, INC." and design mark for "insurance agency
services in the field of manufactured housing and providing
extended warranty services to buyers of manufactured housing,"
would be likely to believe, upon encountering applicant's
substantially similar "HOMEFIRST" and "HOMEFIRST CERTIFIED" marks
for, in each instance, "real estate management of residential
communities" and "land development and construction services,
namely, planning, development and construction of residential
communities," that such closely related services emanate from, or
are sponsored by or associated with, the same source. In
particular, even though such customers may notice the differences
in the marks at issue, they would still be likely to assume, for
instance, that registrant's services are an adjunct to
applicant's services since buyers of manufactured housing at a
managed residential community planned, developed and constructed
by applicant would have need of insurance agency services with
respect to such housing as well as interest in purchasing
extended warranty services therefor.
Decision: The refusal under Section 2(d) is affirmed
in each application.