National Association of Realtorsv.Larry M. Nelis

Trademark Trial and Appeal Board

May 13, 2015

No. 91209482 (T.T.A.B. May. 13, 2015)

This Opinion is Not a
Precedent of the TTAB

Mailed: May 13, 2015

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

National Association of Realtors
v.
Larry M. Nelis
_____

Opposition No. 91209482
_____

Jeffery A. Handelman, Nicholas G. de la Torre, and Michael R. Friedman of Brinks
Gilson & Lione for National Association of Realtors.

Larry M. Nelis, pro se.
_____

Before Quinn, Shaw, and Hightower,
Administrative Trademark Judges.

Opinion by Hightower, Administrative Trademark Judge:
Applicant Larry M. Nelis (“Applicant”) has filed an application to register the
mark REALT OR REALTY, in standard characters and with “REALTY” disclaimed,
for “Business networking services for licensed and unlicensed real estate investors
and service providers” in International Class 35.1

1 Application Serial No. 85257515, filed March 3, 2011, alleging first use anywhere and first
use in commerce on February 10, 2010.
Opposition No. 91209482
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The National Association of Realtors (“Opposer”) opposes registration pursuant
to Section 2(d) of the Trademark Act on the grounds of priority and likelihood of
confusion with several of its marks consisting of or incorporating the term
REALTOR.
We sustain the opposition.
I. Evidentiary Issue
In an appendix to its opening brief, Opposer objects to admission of Applicant’s
notice of reliance on the ground, inter alia, that it was not timely filed during
Applicant’s trial period, contrary to Trademark Rule 2.122(e), 37 C.F.R. § 2.122(e).
Applicant’s testimony period ended on Friday, July 11, 2014. Applicant
submitted his notice of reliance through ESTTA, the Trademark Trial and Appeal
Board Electronic Filing System, on the following day, July 12.2 Therefore,
Applicant’s notice of reliance was not timely submitted.
In addition, the notice of reliance Applicant submitted on July 12 consists of a
list of 57 items, most with corresponding Internet links. This was insufficient to
make the referenced evidence of record. See In re HSB Solomon Assocs., LLC, 102
USPQ2d 1269, 1274 (TTAB 2012); Calypso Tech. Inc. v. Calypso Capital Mgmt. LP,
100 USPQ2d 1213, 1219 (TTAB 2011). On August 19, 2014, the Board received a
hard copy of Applicant’s notice of reliance with more than 300 pages of exhibits.3
There is no indication that this submission was accompanied by a certificate of

2 21 TTABVUE. We note that neither the notice of reliance filed on this date nor the
accompanying certificate of service was signed, as required under Trademark Rules
2.119(a) and (e) and 2.193(a).
3 22 TTABVUE.
Opposition No. 91209482
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mailing pursuant to Trademark Rule 2.197(a). Therefore, the printed notice of
reliance with exhibits is considered filed as of August 19, more than a month after
the close of Applicant’s trial period. Id.; see also Trademark Trial and Appeal Board
Manual of Procedure (TBMP) § 110.08 (2014).
Applicant responds to the substance of Opposer’s objection by stating that:
“Contrary the [sic] Opposer’s claim that Applicant’s Notice of Reliance was
submitted after the close of testimony, the Applicant has proof of mailing proving
the timely mailing on the evening of July 11th, (well before midnight) including
witnesses to the timely filing.”4 Applicant may be referring to the certificates of
service accompanying his July 12 and August 19 submissions, both of which state
that the notice of reliance was served on counsel for Opposer on July 11, 2014. A
certificate of service, however, indicates only when correspondence was served on
the opposing party, not when it was filed with the Board, as explained in
TBMP § 110.08:
The mailing date recited in a certificate of mailing, or the
transmission date recited in a certificate of transmission,
is used for purposes of determining the timeliness of the
filing of the correspondence bearing the certificate. A
certificate of service, on the other hand, indicates the date
when a copy of the correspondence was served upon
another party. A certificate of service cannot be used to
prove the timeliness of the filing of the correspondence.
Because Applicant’s notice of reliance (both with and without exhibits) was filed
with the Board after the close of his testimony period, we grant Opposer’s motion to

4 Applicant’s Brief at A-1, Appendix A, 24 TTABVUE at 30.
Opposition No. 91209482
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strike and have given the notice no consideration.5 See Maids to Order of Ohio Inc.
v. Maid-to-Order Inc., 78 USPQ2d 1899, 1902 (TTAB 2006); Questor Corp. v. Dan
Robbins & Assocs., Inc., 199 USPQ 358, 361 n.3 (TTAB 1978), aff’d, 599 F.2d 1009,
202 USPQ 100 (CCPA 1979).
II. Record
The record in this case consists of the pleadings and the file of the involved
application. Trademark Rule 2.122(b)(1). In addition, Opposer made the following
evidence of record:
• The transcript of Opposer’s discovery deposition of Applicant, with
exhibits (“Nelis Test.”);6
• The transcript of Opposer’s testimony deposition of Robert Goldberg,
Senior Vice President of Opposer, with exhibits (“Goldberg Test.”);7
• Certain of Applicant’s responses to Opposer’s interrogatories and
document requests, as well as Applicant’s initial disclosures;8
• 28 definitions of “Realtor,” most from printed and online dictionaries;9 and
• The following 12 registrations10 pleaded by Opposer:11

5 Because we have granted Opposer’s motion on the ground of untimeliness, we need not
address its other objections to Applicant’s notice of reliance.
6 Opposer’s First Notice of Reliance, Exhibits 1-10, 15 TTABVUE.
7 Exhibits 31-64, 19-20 TTABVUE.
8 Opposer’s Second Notice of Reliance, Exhibits 11-16, 16 TTABVUE. Only Applicant’s
responses to requests for production consisting of objections or indicating that no responsive
documents exist are properly of record. See Trademark Rule 2.120(j)(3)(ii); Hunter Indus.,
Inc. v. Toro Co., 110 USPQ2d 1651, 1657 n.13 (TTAB 2014).
9 Opposer’s Fourth Notice of Reliance, Exhibits 70-97, 18 TTABVUE.
10 Applicant also pleaded Registration Nos. 3257049, which was cancelled January 31, 2014,
and 2880668, which was cancelled April 10, 2015.
11 Each of the registrations was received in evidence pursuant to Trademark Rule
2.122(d)(1) because the notice of opposition was accompanied by a current printout from the
electronic database records of the Patent and Trademark Office showing the status and title
of the registration. It was unnecessary for Opposer to submit status and title copies of the
same registrations with its third notice of reliance. Exhibits 17-30, 17 TTABVUE.
Opposition No. 91209482
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Reg. No. Issued Mark Services12
1 515200 9/13/1949 REALTORS Brokerage of real estate, industrial brokerage, farm
brokerage, mortgage
brokerage, in the appraisal of
real estate, management of
real estate, in the building of
structures on real estate, in
the subdivision of real estate
properties, and in community
planning for the development
of raw land and slum
clearance areas (Class 36).
2 519789 1/10/1950 REALTOR
3 1006457 3/11/1975 Real estate brokerage
(Class 35).
4 1018600 8/19/1975 NATIONAL
ASSOCIATION OF
REALTORS
Association services-namely,
promoting the interests of
member real estate agents
and brokers and the public
interest in improving real
estate services (Class 36).
5 1137081 6/17/1980 Indicating collective
membership in applicant
(Class 200).
6 1323913 3/5/1985 REALTOR
ASSOCIATE
Indicating membership in an
organization for real estate
professionals (Class 200).
7 2447874 5/1/2001 NATIONAL
REALTORS
DATABASE SYSTEM
Computerized on-line storage
of the member and office
records of real estate
associations nationwide
(Class 39).

12 The fifth and sixth registrations are membership marks in Class 200, while the
remainder are registered for services in the respective international classifications listed.
See Trademark Manual of Examining Procedure (TMEP) § 1304.08(c) (January 2015).
Opposition No. 91209482
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Reg. No. Issued Mark Services12
8 2501684 10/3/2001 REALTOR TEAM
STORE
Mail order retail store
services and retail store
services available through
multi-user global information
networks featuring products
for use by professionals in the
real estate industry
(Class 35).
9 3259354 7/3/2007 REALTOR BENEFITS Association services, namely, development and
administration of a discount
purchasing program for
enabling participants to
obtain discounts from
vendors who have agreed to
provide discounts or other
enhancements on their goods
and services for members
(Class 35).
10 4029337 9/20/2011 REALTORS
VALUATION MODEL
Real estate appraisal and
valuation (Class 36).
11 4035340 10/4/2011 REALTORS
PROPERTY
RESOURCE
Providing an on-line
computer database featuring
real property tax information
(Class 35).
Providing an on-line
computer database featuring
real property valuation and
real estate multiple listing
information (Class 36).
Providing an on-line
computer database featuring
real property site selection
information (Class 37).
12 4149510 5/29/2012 REALTOR.COM Providing an online data base which features information
regarding real estate listings
which are carried by the
applicant’s members
(Class 36).

Opposition No. 91209482
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III. Parties
Applicant is a resident of Riverview, Florida who is a self-employed real estate
broker and owner of a real estate firm.13 He is a member of Opposer, the National
Association of Realtors, as are the agents he employs.14 Opposer is a national trade
association with members in the real estate business, including real estate brokers
and salespeople15 as well as property managers, appraisers, counselors and others
engaged in residential and commercial real estate.16
IV. Opposer’s Standing and Priority
Standing is a threshold issue that must be proven by the plaintiff in every inter
partes case. See Ritchie v. Simpson, 170 F.3d 1092, 50 USPQ2d 1023, 1025
(Fed. Cir. 1999). Opposer’s standing to oppose registration of Applicant’s mark is
established by its pleaded registrations, which the record shows to be valid and
subsisting, and owned by Opposer. See, e.g., Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000). In addition, because Opposer’s
pleaded registrations are of record, priority is not an issue with respect to the goods
and services covered by Opposer’s pleaded registrations. Penguin Books Ltd. v.
Eberhard, 48 USPQ2d 1280, 1286 (TTAB 1998) (citing King Candy Co. v. Eunice
King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108, 110 (CCPA 1974)).

13 Nelis Test. at 7:1-13, 21:9-22:18, 15 TTABVUE at 11, 25-26.
14 Id. at 23:23-25:18, 85:11-19, 15 TTABVUE at 27-29, 89; Answer at 1 and ¶ 12, 4
TTABVUE at 1, 15.
15 Answer ¶ 1, ¶ 3, 4 TTABVUE at 2, 4.
16 Goldberg Test. at 16:13-17:24 and Exhibit 33 (“National Association of Realtors 2013
Member Profile”), 19 TTABVUE at 20-21, 226.
Opposition No. 91209482
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V. Likelihood of Confusion
Our determination under Trademark Act Section 2(d) is based on an analysis of
all 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); see also In re Majestic Distilling Co., 315 F.3d 1311,
65 USPQ2d 1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion analysis,
however, two key considerations are the similarities between the marks and the
similarities between the goods or services, the first two du Pont factors. See
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.”). Opposer bears the burden of proving its claim of likelihood of
confusion by a preponderance of the evidence. Cunningham, 55 USPQ2d at 1848.
A. Similarity of the Marks
We begin by addressing the first du Pont factor, which is the similarity of the
parties’ marks. In a likelihood of confusion analysis, we compare the marks in their
entireties for similarities and dissimilarities in appearance, sound, connotation and
commercial impression. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). “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
Opposition No. 91209482
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the parties.” Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101
USPQ2d 1713, 1721 (Fed. Cir. 2012) (citation omitted).
Applicant has applied to register REALT OR REALTY, with the exclusive right
to use the generic word “REALTY”17 disclaimed. Each of Opposer’s pleaded
registrations either consists of the mark REALTOR, in singular or plural form, or
comprises that term in combination with a design or other words that are
descriptive and often disclaimed. Opposer also claims common-law rights in the
mark REALTOR, defined in record evidence as, for example:
• “A collective mark for a real-estate agent affiliated with the National
Association of Realtors”;18
• “collective mark – used for a real estate agent who is a member of the
National Association of Realtors”;19 and
• “A Realtor is a real estate agent or broker who belongs to the National
Association of Realtors, a trade association whose members agree to its
ways of doing business and code of ethics. The National Association of
Realtors offers its members seminars and courses that deal with real
estate topics.”20
Applicant admits that “Opposer’s ‘REALTOR (membership) marks are strong and
recognized throughout the United States.’”21

17 See Answer ¶ 3 at 6, 4 TTABVUE at 6 (referring to the “common generic noun ‘realty,’
which is actually a word meaning ‘real estate’”).
18 Opposer’s Fourth Notice of Reliance, Exhibit 78, WEBSTER’S II NEW RIVERSIDE
UNIVERSITY DICTIONARY 980 (1984), 18 TTABVUE at 46.
19 Id., Exhibit 71, WEBSTER’S THIRD NEW INTERNATIONAL DICTIONARY OF THE ENGLISH
LANGUAGE UNABRIDGED 1891 (2002), 18 TTABVUE at 15-16.
20 Id., Exhibit 87, ERIC TYSON & RAY BROWN, HOME BUYING FOR DUMMIES 347 (2d ed.
2001), 18 TTABVUE at 84.
21 Answer ¶ 11, 4 TTABVUE at 15.
Opposition No. 91209482
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Applicant asserts that the first portion of its applied-for mark, REALT, “is a
unique and distinct recursive acronym derived from the definition of, ‘A real estate
investor of two or more real properties.”22 Nonetheless, in Applicant’s mark the
syllable REALT is followed immediately by “OR” to form REALT OR, a phrase
identical to Opposer’s mark except for the addition of a space between the syllables.
We find that this space does little to diminish the high visual and phonetic
similarity between the first portion of Applicant’s mark, REALT OR, and Opposer’s
well-known mark REALTOR. See, e.g., In re ING Direct Bancorp, 100 USPQ2d
1681, 1690 (TTAB 2011) (finding “Person2Person Payment” generic despite deletion
of spaces); 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).
Thus, the first part of Applicant’s mark is nearly identical to the entirety of
Opposer’s mark REALTOR. Consumers encountering Applicant’s mark are likely to
first notice this lead term. Century 21 Real Estate Corp. v. Century Life of Am., 970
F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir. 1992); see also, e.g., Palm Bay Imports,
73 USPQ2d at 1692 (stating that “veuve” is the most prominent part of the mark
VEUVE CLICQUOT because “veuve” is the first word in the mark); Presto Prods.
Inc. v. Nice-Pak Prods. Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (noting that “it is
often the first part of a mark which is most likely to be impressed upon the mind of
a purchaser and remembered”).

22 Applicant’s Brief at 1, 24 TTABVUE at 4.
Opposition No. 91209482
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The similarity between the two marks also is heightened because Applicant’s
mark essentially subsumes the entirety of Opposer’s mark REALTOR. Likelihood of
confusion has been found where the entirety of one mark is incorporated within
another. See, e.g., Coca-Cola Bottling Co. of Memphis, Tennessee, Inc. v. Joseph E.
Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105 (CCPA 1975) (finding
applicant’s mark BENGAL LANCER for club soda, quinine water and ginger ale
likely to cause confusion with BENGAL for gin); Johnson Publ’g Co. v. Int’l Dev.
Ltd., 221 USPQ 155, 156 (TTAB 1982) (finding applicant’s mark EBONY DRUM for
hair care products likely to cause confusion with EBONY for cosmetics). The
presence in Applicant’s mark of the additional word REALTY does very little to
distinguish it from Opposer’s mark, particularly given that “realty” is generic in
association with both parties’ services related to real estate.
The strong similarity in appearance, sound, meaning, and overall commercial
impression between Applicant’s mark REALT OR REALTY and Opposer’s mark
REALTOR are evident from Applicant’s use of its mark. Pictured below is the
specimen of use Applicant submitted with its application, from its website
:23

23 Opposer introduced the specimen in evidence during its testimony period as an exhibit to
Applicant’s discovery deposition. Nelis Test. at Exhibit 2, 15 TTABVUE at 187.
Opposition No. 91209482
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An excerpt from one of the pages Applicant submitted during prosecution in
response to the Examining Attorney’s request for additional information follows:24

24 Id., 15 TTABVUE at 239; June 28, 2012 Response to Office Action at 3.
Opposition No. 91209482
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For all of these reasons, we find Applicant’s mark REALT OR REALTY to be
similar to Opposer’s mark REALTOR, both as registered and as used at common
law. The first du Pont factor therefore weighs in Opposer’s favor.
B. Similarity of the Services, Channels of Trade, and Customers
The second, third, and fourth du Pont factors assess the similarity or
dissimilarity of the parties’ goods and services; their established, likely-to-continue
trade channels; and the conditions under which and buyers to whom sales are
Opposition No. 91209482
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made. The parties’ services need not be similar or even competitive to support a
finding of likelihood of confusion. It is sufficient that the respective services are
related in some manner, or that the conditions surrounding their marketing are
such that they would be encountered by the same purchasers under circumstances
that could, in light of the similarity of the marks, give rise to the mistaken belief
that they originate from or are associated with the same source. See Hilson
Research Inc. v. Soc’y for Human Resource Mgmt., 27 USPQ2d 1423, 1438 (TTAB
1993) (“The critical issue in this case, and in any likelihood of confusion dispute, is
whether or not consumers are likely to believe, because of the marks used, that
goods and/or services emanate from the same source, or that there exists some
affiliation or sponsorship connection.”).
We must focus on the identification in the application, rather than what the
record may reveal regarding Applicant’s particular services, because “‘the question
of registrability of an applicant’s mark must be decided on the basis of the
identification of goods set forth in the application.’” Stone Lion Capital Partners,
L.P. v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014)
(quoting Octocom Sys., Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 16
USPQ2d 1783, 1787 (Fed. Cir. 1990)).
Applicant’s services are “Business networking services for licensed and
unlicensed real estate investors and service providers.” Opposer submitted
testimony regarding its common-law use since at least 1995 of marks consisting of
or comprising REALTOR in association with real estate-related goods and services,
Opposition No. 91209482
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including networking opportunities for its members and specifically “member
networking as it relates to real estate investment.”25
We find Applicant’s identified services to be not only similar to services offered
by Opposer but also to overlap with them. Because the parties’ identified services
are overlapping, the second du Pont factor favors Opposer. Moreover, because
Applicant’s services are offered to licensed real estate investors and service
providers, we find that they are offered through the same channels of trade to the
same classes of customers as Opposer’s services.26 American Lebanese Syrian Assoc.
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
We therefore find that the second, third, and fourth du Pont factors weigh in
favor of a likelihood of confusion.
C. Conclusion as to Likelihood of Confusion
We have found that du Pont factors one through four weigh in Opposer’s favor.
To the extent that any factors for which no evidence was presented may be
applicable, we treat them as neutral. Considering the record evidence as a whole,
we find that Applicant’s mark REALT OR REALTY is likely to cause consumer
confusion with Opposer’s marks consisting of or comprising the term REALTOR
when used in association with their respective services.

25 Goldberg Test. at 10:1-3, 31:19-33:2, 35:18-40:4, 19 TTABVUE at 14, 35-37, 39-44.
26 Opposer’s membership includes licensed real estate professionals. See, e.g., Nelis Test. at
56:11-15, 15 TTABVUE at 60; December 8, 2011 Response to Office Action (stating that, to
become a member of Opposer, an individual “must be a licensed real estate sales person or
broker”), Nelis Test. at Exhibit 2, 15 TTABVUE at 213.
Opposition No. 91209482
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VI. Applicant’s Affirmative Defense and Request for Cancellation of Opposer’s
Registrations
Finally, we turn to Applicant’s affirmative defense of estoppel and request that
the Board cancel Opposer’s registrations, both of which are grounded in the
proposition that REALTOR is a generic term improperly registered by Opposer.
Applicant asserted this defense and that Opposer’s marks were generic in its
answer. Applicant, however, did not file a counterclaim or separate petition for
cancellation of any of Opposer’s registrations. Therefore, the asserted defense is
unavailable. Trademark Rule 2.106(b)(2)(i) (“A defense attacking the validity of any
one or more of the registrations pleaded in the opposition shall be a compulsory
counterclaim if grounds for such counterclaim exist at the time when the answer is
filed.”). See also Vitaline Corp. v. General Mills Inc., 891 F.2d 273, 13 USPQ2d 1172,
1174 (Fed. Cir. 1989) (affirming summary judgment for an abandonment claim not
asserted as a counterclaim in original proceeding).27
Decision: The opposition is sustained.

27 We need not, and do not, address Opposer’s assertion of licensee estoppel.