Lazerus Properties

Trademark Trial and Appeal Board

Jul 9, 2020

88093222 (T.T.A.B. Jul. 9, 2020)

This Opinion is Not a
Precedent of the TTAB

Mailed: July 9, 2020
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
In re Lazerus Properties
_____
Serial No. 88093222
_____
Leotyne Fan, Esq.
for Lazerus Properties.

Laurie Mayes, Trademark Examining Attorney, Law Office 101,
Ronald R. Sussman, Managing Attorney.
_____
Before Bergsman, Wellington, and English,
Administrative Trademark Judges.

Opinion by Wellington, Administrative Trademark Judge:
Lazerus Properties (“Applicant”) seeks registration on the Principal Register of
the mark DREAMS TO REALTY (REALTY disclaimed), in standard characters for
“real estate brokerage” services in International Class 36.1

1 Application Serial No. 88093222, filed on August 27, 2018, is based on Applicant’s claim of
first use anywhere and in commerce on November 8, 2018, pursuant to Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a).
Serial No. 88093222
- 2 -
The Examining Attorney refused registration under Trademark Act Section 2(d),
15 U.S.C. § 1052(d), based on a likelihood of confusion with the registered mark
MAKING DREAMS A REALTY, in standard characters, for “commercial and
residential real estate agency services” in International Class 36.2 When the refusal
was made final, Applicant appealed and requested reconsideration. After the
Examining Attorney denied the request for reconsideration, the appeal was resumed.
The appeal has been briefed.
For the reasons set forth below, we affirm the refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. DuPont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, referred to as “DuPont factors”); 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 In re Guild Mortg. Co., 912 F.3d
1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Two key considerations are the
similarities between the marks and the relatedness of the services. See In re Chatam
Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (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

2 Registration No. 5396725 issued on February 6, 2018.
Serial No. 88093222
- 3 -
in the essential characteristics of the goods [or services] and differences in the
marks.”).
A. Similarity of the Marks
We first compare Applicant’s DREAMS TO REALTY mark to the cited mark
MAKING DREAMS A REALTY “in their entireties as to appearance, sound,
connotation and commercial impression.” Palm Bay Imps. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1746 (TTAB 2018) (citing In re Davia, 110 USPQ2d 1810, 1812
(TTAB 2014)). We assess not whether the marks can be distinguished in a side-by-
side comparison, but rather whether their overall commercial impressions are so
similar that confusion as to the source of the services offered under the respective
marks is likely to result. Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d
1546, 1551 (TTAB 2012).
Here, the two marks are very similar because they share the same connotation
and commercial impression. Specifically, both marks play on the near identity of the
words REALTY and REALITY, in conjunction with the same word DREAMS, and
they impart an expression to consumers that one can obtain the “realty” (real estate
or homes) of their dreams. In other words, consumers encountering either mark will
attribute this same meaning to the marks – namely, that through Applicant’s or
Serial No. 88093222
- 4 -
Registrant’s services, the consumer can turn their real estate dreams into reality with
a purchase of a home or other real property.
In addition, we find the marks are visually and aurally similar because of the
shared wording, DREAMS and REALTY. Consumers encountering one mark may
easily confuse it with the other given these same key words are present in the marks.
Given the strong resemblance of the marks, particularly their having the same
overall connotation and commercial impression, this DuPont factor weighs in favor of
a likelihood of confusion.
B. Alleged Dilution and Weakness of Registrant’s Mark
Applicant contends that Registrant’s mark is “weak” and “diluted” and that the
sixth DuPont factor – involving the number and nature of similar marks in use in
connection with the same or similar services – favors finding confusion not likely. In
particular, Applicant argues that “the terms ‘Dreams’ and ‘Realty’ are commonly used
in the real estate industry, and are not likely to cause confusion.”3 In support,
Applicant relies on printouts from two Google website searches (each consisting of
two pages) for the terms “dreams realty” and “making dreams a realty.”4
The Examining Attorney disputes the relevance of the Google printouts, pointing
out that several of the listed companies use the terms “dreams” and “realty” together
to convey commercial impressions, e.g., Hidden Dreams Realty, Seaside Dreams
Realty, Sunset Dreams Realty, etc., that are very different from that created by

3 14 TTABVUE 13.
4 Submitted with Applicant’s request for reconsideration filed November 8, 2019.
Serial No. 88093222
- 5 -
Applicant’s and Registrant’s mark. The Examining Attorney also notes that a “search
of the Office’s X-Search database of registered marks found only one registered mark
(the cited registered mark) with the terms ‘dreams’ and ‘realty’ or ‘reality’ for real
estate services.”5 The Examining Attorney argues that the registered mark is
therefore a “unique, strong mark entitled to broad trademark protection.”6
Based on the record before us, we find that Applicant failed to prove that
Registrant’s mark, or the double-entendre expression of converting a dream into
real[i]ty found in both Applicant’s and Registrant’s mark, is a weak or common
expression in the real estate industry. The actual number of third parties using such
an expression listed in the Google printouts is minimal (one company “Keller
Williams” is listed multiple times). Accordingly, the sixth DuPont factor is neutral in
our analysis.
C. Similarity of the Services, Trade Channels and Class of
Purchasers
In analyzing the second DuPont factor, we look to the identifications in the
application and cited registration. See Stone Lion Capital Partners v. Lion Capital
LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v.
Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Here, Applicant’s “real estate brokerage” services are legally identical to
Registrant’s “commercial and residential real estate agency services,” because the

5 16 TTABVUE 8-9, referencing a search report attached to the May 8, 2019 Office Action,
TSDR p. 1.
6 Id. at 9.
Serial No. 88093222
- 6 -
former is defined as “any activity that involves offering or providing real estate
brokerage services to the public, including (i) acting as a . . . real estate agent, or real
estate salesperson for a buyer, seller, lessor, or lessee of real property.”7 Simply put,
Applicant’s recited services are synonymous with or encompass Registrant’s services.
Applicant argues that Registrant’s mark is in actuality “associated with an
attorney service that helps consumers through bankruptcy.”8 (Italics in original.)
Applicant references materials from Registrant’s website to support this point.
However, as stated above and as it has long and often been pointed out, we must
compare the respective services as they are described in the application and cited
registration; we cannot restrict the scope or alter the descriptions of services based
on extrinsic evidence. Stone Lion Capital Partners, 110 USPQ2d 1161; Octocom Sys.,
16 USPQ2d at 1787 (“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 [or
services] set forth in the application regardless of what the record may reveal as to
the particular nature of an applicant’s goods [or services], the particular channels of
trade or the class of purchasers to which the sales of goods [or services] are directed.”);
In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008) (“it is the identification
of goods [or services] that controls, not what extrinsic evidence may show about the
specific nature of the goods [or services]”).

7 Definition (taken from website Defined Term, “a dictionary of legal, industry-specific, and
uncommon terms” www.definedterm.com), attached to Office Action issued May 8, 2019,
TSDR p. 99.
8 14 TTABVUE 3.
Serial No. 88093222
- 7 -
Applicant also argues that its mark is “associated with a real estate brokerage
with brokers and agents rendering services for the purchase and sale of high-end
residential and commercial properties.”9 Again, there is no such limitation in
Applicant’s recitation of services and we must therefore assume that its real estate
brokerage services include the sale and purchase of real estate in all price ranges and
to all classes of purchasers.
Turning to the trade channels and consumers, because the services in the cited
application are legally identical to those in the cited registration, we presume that
they travel through the same channels of trade to the same classes of purchasers. See
In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (identical
goods or services are presumed to travel in same channels of trade to same class of
purchasers); see also In re Inn at St. John’s, LLC, 126 USPQ2d 1742, 1745 (TTAB
2018), aff’d mem. (No. 18-2236) (Fed. Cir. September 13, 2019) (“Because the services
described in the application and the cited registration are identical, we presume that
the channels of trade and classes of purchasers are the same.”); American Lebanese
Syrian Assoc. Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028
(TTAB 2011) (where the services were legally identical, “the marketing channels of
trade and targeted classes of consumers and donors are the same”). Thus, the second
and third DuPont factors weigh heavily in favor of likely confusion.

9 Id. at 2.
Serial No. 88093222
- 8 -
D. Alleged Sophistication of Consumers and Care in Selection of
Real Estate Services
Under the fourth DuPont factor, Applicant argues that “given the nature of
Applicant’s and Registrant’s services, consumers will not likely impulsively purchase
or retain services.”10 In this regard, Applicant is again attempting to improperly
discern differences in its services with those of Registrant based on extrinsic evidence.
As discussed, supra, the involved services are identical for purposes of our analysis
and they are presumed to be sold the same classes of consumers.
Applicant also argues that “even in the case of the least sophisticated consumer,
a decision as important as purchasing a home, obtaining a loan, or going through the
bankruptcy process, will be made with at least some thought and research,” relying
on evidence showing that an average consumer searching for a home to purchase will
have visited “a median of 10 homes over 10 weeks” making a decision to purchase.11
The Examining Attorney counters with evidence that “shows that many
consumers are unsophisticated in the field of real estate,” relying on Internet
printouts of articles indicating that many individuals are “unsophisticated” when it
comes to real estate.12 For example, a New York Times article contemplates a class
of “unsophisticated, first-time home buyers.”13

10 Id. at 7.
11 Id. at 8, citing to “NAR Home Buyer and Seller Generational Trends Report,” a copy which
was submitted with Applicant’s request for reconsideration filed November 8, 2019 (4
TTABVUE).
12 16 TTABVUE 10.
13 Id., 8 TTABVUE 12 (printout of article).
Serial No. 88093222
- 9 -
The degree of care of the relevant consumers – which, in this case, includes those
in the general population interested in buying or selling real estate, such as first-
time homebuyers -- affects how carefully these consumers will consider the marks at
issue. While many of Applicant’s and Registrant’s customers may be “sophisticated,”
the evidence shows that there are also “unsophisticated” purchasers when it comes
to real estate. We must base our decision on the least sophisticated customers in that
relevant group. Stone Lion Capital Partners, 110 USPQ2d at 1163 (“Although the
services recited in the application also encompass sophisticated investors, Board
precedent requires the decision to be based ‘on the least sophisticated potential
purchasers.”‘). Given that there are some unsophisticated consumers, whom we
cannot assume will exercise any higher degree of care in their selection of provider of
real estate services, this factor remains neutral in our analysis of whether confusion
is likely.
E. Conclusion
Based on the overall strong similarity of the marks, DREAMS TO REALTY and
MAKING DREAMS A REALTY, that impart the same commercial impression and
connotation, we find confusion is likely to occur when they are used in connection
with identical real estate services that move in the same channels of trade to the
same classes of customers.
Decision: The refusal to register Applicant’s mark is affirmed.