Mid-America Group, Ltd.

Trademark Trial and Appeal Board

Dec 13, 2007

No. 78462025 (T.T.A.B. Dec. 13, 2007)

Hearing: Mailed:
Aug. 21, 2007 Dec. 13, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Mid-America Group, Ltd.
________

Serial No. 78462025
_______

Edmund J. Sease of McKee, Voorhees & Sease, PLC for
Mid-America Group, Ltd.

Edward Nelson, Trademark Examining Attorney, Law Office 106
(Mary I. Sparrow, Managing Attorney).
_______

Before Grendel, Kuhlke and Taylor, Administrative Trademark
Judges.

Opinion by Grendel, Administrative Trademark Judge:

Mid-America Group, Ltd., applicant herein, seeks
registration on the Principal Register of the mark depicted
below

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 78462025

2
for services recited in the application as “real estate
development services,” in Class 37.1 Applicant has
disclaimed GROUP apart from the mark as shown. The
application includes a “description of the mark” statement
stating that “The mark consists in part of a stylized
letter M.”2
At issue in this appeal is the Trademark Examining
Attorney’s final refusal to register applicant’s mark on
the ground that the mark, as used in connection with the
recited services, so resembles the mark depicted below,

previously registered on the Principal Register for
services recited in the registration as “real estate
brokerage and management services” in Class 36,3 as to be

1 Serial No. 78462025, filed on August 4, 2004. The mark is
based on use in commerce, and June 4, 2004 is alleged in the
application to be the date of first use anywhere and the date of
first use in commerce.

2 Although applicant’s description of the mark in the application
states that the design element in the mark is “a stylized letter
M,” we find that the design element just as easily could be
perceived by purchasers as a stylized “MA,” the letters with
which the words “MID” and “AMERICA” begin. Applicant concedes as
much in its reply brief, when it contends that the design
element, “upon a second glance, creates the impression of an ‘M’
and ‘A.’” (Reply brief at 6.)

3 Registration No. 2444425, issued April 17, 2001. Affidavits
under Sections 8 and 15 accepted and acknowledged.
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3
likely to cause confusion, to cause mistake, or to deceive.
Trademark Act Section 2(d), 15 U.S.C. §1052(d).
The appeal is fully briefed, and an oral hearing was
held on August 21, 2007. After careful consideration of
the evidence of record and the arguments of counsel, we
affirm the refusal to register.
Our likelihood of confusion determination under
Section 2(d) is based on an analysis of all of the facts in
evidence that are relevant to the factors bearing on the
likelihood of confusion issue (the du Pont factors). See
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v.
Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d
1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.
2003); In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
The first du Pont factor requires us to determine the
similarity or dissimilarity of the marks when viewed in
their entireties in terms of appearance, sound, connotation
and overall commercial impression. Palm Bay Imports, Inc.,
supra. The test, under the first du Pont factor, is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
Ser. No. 78462025

4
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the goods
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. See Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although
the marks at issue must be considered in their entireties,
it is well-settled that one feature of a mark may be more
significant than another, and it is not improper to give
more weight to this dominant feature in determining the
commercial impression created by the mark. See In re
Chatam International Inc., 380 F.3d 1340, 71 USPQ2d 1944
(Fed. Cir. 2004); In re National Data Corp., 753 F.2d 1056,
224 USPQ 749 (Fed. Cir. 1985).
Applying these principals in the present case, we find
as follows. Initially, we find that the dominant feature
in the commercial impression of each mark is the
designation MID-AMERICA. Even though MID-AMERICA carries a
somewhat geographical significance, we still find that it
is what purchasers are most likely to perceive and recall
as the primary source-indicating feature of the mark. The
disclaimed word GROUP in applicant’s mark is descriptive or
even generic, and purchasers would accord it little or no
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5
source-indicating significance. The “MA” design feature in
each mark certainly appears prominently, but it is likely
to be perceived in each mark as an abbreviation of the
dominant source-indicating designation “MID-AMERICA.”
While we do not ignore these other elements of the
respective marks, we find that it is the designation MID-
AMERICA which is most likely to be perceived and recalled
by purchasers as the primary source-indicating feature of
the respective marks. It is therefore MID-AMERICA which is
entitled to greater weight in our comparison of the marks.
See In re Chatam International Inc. supra; In re National
Data Corp. supra.
In terms of appearance, we find that the marks are
similar. Both prominently feature the hyphenated word MID-
AMERICA, accompanied by a stylized “MA” design feature.
Applicant’s mark appears on three lines while the cited
registered mark appears on only one, but that difference
would be of little significance to purchasers looking to
the marks as source indicators. The presence in small
letters of the descriptive or generic word GROUP in
applicant’s mark likewise fails to distinguish the marks
significantly in terms of appearance. The design elements
in the respective marks are not identical in appearance
upon side-by-side comparison, but they still look similar
Ser. No. 78462025

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to the extent that both would be seen as stylized
representations of the letters “MA.”
In terms of sound, we find that the marks are similar
to the extent that they both include the designation MID-
AMERICA. To the extent that the design elements would be
vocalized at all, they would be vocalized in the same way
in each mark, i.e., as the letters “MA.” The marks sound
different to the extent that the cited registered mark does
not include the generic word GROUP, but we find that
difference to be outweighed by the similarity in sound
which results from the vocalization in each mark of the
letters “MA” and the word MID-AMERICA.
In terms of connotation, we find that the marks are
similar to the extent that the designation MID-AMERICA
means the same thing in both marks. To the extent that the
design elements in the respective marks have any
connotation at all, they are similar in that both would be
understood as standing for or reinforcing MID-AMERICA. The
word GROUP in applicant’s mark would be viewed merely as an
entity designation or descriptor which lends little or
nothing to the meaning of the mark as a whole.
In terms of overall commercial impression, we find
that the marks are similar. Although the marks are not
identical when viewed side-by-side, both marks create the
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7
commercial impression of services rendered by a company
calling itself MID-AMERICA. The “MA” design elements in
the marks, although not identical in appearance, are
nonetheless similar in that they reinforce the primary
source-indicating significance of the designation MID-
AMERICA in each mark. Applicant’s addition of the
descriptive or generic word GROUP does not significantly
distinguish the marks in terms of overall commercial
impression.
For the reasons discussed above, we find that the
marks are similar rather than dissimilar when viewed in
their entireties. The marks are not identical when
compared side-by-side, but that is not the test. The
similarity between the marks which results from the
presence of the designation MID-AMERICA in both marks
outweighs the points of dissimilarity between the marks.
Purchasers encountering the marks are likely to assume,
because of the presence of MID-AMERICA in both marks and
notwithstanding the dissimilarities between the marks, that
both marks signify a single or related source.
The second du Pont factor requires us to determine the
similarity or dissimilarity of the services as identified
in the application and in the cited registration. It is
settled that it is not necessary that the services be
Ser. No. 78462025

8
identical or even competitive in order to find that they
are related for purposes of our likelihood of confusion
analysis. That is, the issue is not whether consumers
would confuse the services themselves, but rather whether
they would be confused as to the source of the services.
See In re Rexel Inc., 223 USPQ 830 (TTAB 1984). It is
sufficient that the services be related in some manner, or
that the circumstances surrounding their use be such, that
they would be likely to be encountered by the same persons
in situations that would give rise, because of the marks
used thereon, to a mistaken belief that they originate from
or are in some way associated with the same source or that
there is an association or connection between the sources
of the respective services. See In re Martin’s Famous
Pastry Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed.
Cir. 1984); In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph Corp.,
197 USPQ 910 (TTAB 1978).
The Trademark Examining Attorney has made of record
four use-based third-party registrations in which the
recitations of services consist of both “real estate
development services,” the services recited in applicant’s
application, and “real estate brokerage and management
services,” the services recited in the cited registration.
Ser. No. 78462025

9
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 probative value to the
extent that they serve to suggest that the services listed
therein are of a kind which may emanate from a single
source under a single mark. See In re Albert Trostel &
Sons Co., 29 USPQ2d 1783 (TTAB 1993); and In re Mucky Duck
Mustard Co. Inc., 6 USPQ2d 1467 (TTAB 1988). We find that
this evidence suffices to establish that applicant’s and
registrant’s services are related. A landowner seeking a
real estate development company to develop its property
also is likely to be in the market for the services of a
real estate management company to manage the property once
it is developed. The evidence of record shows that such a
landowner can look to a single source for both services.4
For these reasons, we find that the second du Pont factor
weighs in favor of a finding of likelihood of confusion.
Under the fourth du Pont factor (“conditions of
purchase”), we find that the purchasers of the services

4 In response to questioning by the Board at the oral hearing in
this case, applicant’s counsel conceded that real estate
development services and real estate management services can be
and are offered and rendered by the same company. Respondent’s
counsel also conceded that the purchasers of the respective
services could be the same. These concessions are not evidence,
but they tend to corroborate the third-party registration
evidence which is in the record which establishes the relatedness
of the services.
Ser. No. 78462025

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involved in this case are likely to include purchasers such
as commercial property owners who are engaged in large-
scale projects. These purchasers are likely to be
knowledgable and careful, a fact which weighs against a
finding of likelihood of confusion. However, neither
applicant’s recitation of services nor the recitation of
services in the cited registration limits the purchasers of
the respective services to those with large-scale real
estate projects. In the absence of such a restriction, we
must presume that the purchasers of the services also could
include smaller-scale property owners with one-time
projects, who are not necessarily as familiar with the real
estate development and real estate management fields.
However, on balance, we find purchasers of the real estate
services involved in this case are likely to be at least
somewhat knowledgable and careful when making their
purchasing decisions. The fourth du Pont factor
accordingly weighs against a finding of likelihood of
confusion.
To summarize, we find that the sophistication of
purchasers weighs in applicant’s favor, but that it is
ultimately outweighed, in our likelihood of confusion
analysis, by the similarity of the marks and the close
relationship between the respective services. Taking into
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account all of the evidence as it pertains to the du Pont
factors, we find that a likelihood of confusion exists. To
the extent that any doubts might exist as to the
correctness of our conclusion, we resolve such doubts
against applicant. See In re Shell Oil Co., 992 F.2d 1204,
26 USPQ2d 1687 (Fed. Cir. 1993); In re Hyper Shoppes (Ohio)
Inc., 837 F.2d 840, 6 USPQ2d 1025 (Fed. Cir. 1988); and In
re Martin’s Famous Pastry Shoppe, Inc., supra.

Decision: The refusal to register is affirmed.