National Association of Realtorsv.Titan Int’l., Inc.

Trademark Trial and Appeal Board

Sep 28, 2004

No. 91125778 (T.T.A.B. Sep. 28, 2004)

Mailed: 9/28/04
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
National Association of Realtors
v.
Titan International, Inc.
_____
Opposition No. 91125778
to application Serial No. 76321648
filed on October 4, 2001
_____
Michael F. Thiel, Esq. for National Association of Realtors.
Daniel A. Rosenberg of Davis, Brown, Koehn, Shors & Roberts
for Titan International, Inc.
______
Before Hanak, Chapman and Quinn, Administrative Trademark
Judges.
Opinion by Quinn, Administrative Trademark Judge:
An application was filed by Titan International, Inc.
to register the mark REALTOR for “tires.”1
Registration was opposed by National Association of
Realtors under Section 2(d) of the Trademark Act on the
ground that applicant’s mark, when applied to applicant’s
goods, so resembles opposer’s previously used and registered
1 Application Serial No. 76321648, filed October 4, 2001,
alleging first use anywhere and first use in commerce on January
29, 1999.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Opposition No. 91125778
2
marks REALTOR, REALTOR.COM and REALTOR VIP for a variety of
services, as to be likely to cause confusion.
Applicant, in its answer, denied the salient
allegations in the notice of opposition.2
The record consists of the pleadings; the file of the
involved application; certified copies of opposer’s pleaded
registrations, dictionary definitions of “Realtor,” excerpts
from printed publications, printed publications in their
entirety, excerpts of articles retrieved from the NEXIS
database, and excerpts of web sites taken from the Internet,
all introduced by way of opposer’s notices of reliance; and
third-party registrations made of record by applicant. The
parties filed briefs.3 An oral hearing was not requested.
There is no issue as to opposer’s priority in view of
opposer’s registrations of its REALTOR marks which opposer
has made of record. King Candy, Inc. v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). The
pleaded registrations made of record are as follows:
REALTOR as a collective trademark for “brokerage of real
estate, industrial brokerage, farm brokerage, mortgage
brokerage, in the appraisal of real estate, management of
2 Applicant set forth certain allegations, including that
opposer’s mark is generic, in its answer as “affirmative
defenses.” No counterclaim was ever filed against any of the
pleaded registrations and, accordingly, no consideration will be
given to the allegation of genericness.
3 Opposer’s motion to extend its time to file a reply brief, to
which applicant consented, is granted. Accordingly, opposer’s
reply brief is considered timely filed.
Opposition No. 91125778
3
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”4; REALTOR.COM (“.COM” disclaimed) for
“providing an online data base which features information
regarding real estate listings which are carried by the
applicant’s members”5; and REALTOR VIP for “association
services, namely, developing group purchasing programs and
identifying vendors who have agreed to provide discounts or
other enhancements on their goods and services for
applicant’s members,” and “financial and insurance services
for members of the applicant, consisting of a program
encompassing retirement and investment offerings, namely,
underwriting property/casualty insurance, underwriting
life/health insurance, financial planning, funds investment
and investment consultation.”6
Our 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.
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). In any likelihood of confusion
analysis, two key considerations are the similarities or
dissimilarities between the marks and the similarities or
4 Registration No. 519789, issued January 10, 1950; renewed.
5 Registration No. 2291873, issued November 16, 1999.
6 Registration No. 2615872, issued September 3, 2002.
Opposition No. 91125778
4
dissimilarities between the goods and/or services.
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976).
Applicant’s mark is identical to the REALTOR mark of
opposer. Further, applicant’s mark is substantially similar
to opposer’s REALTOR.COM and REALTOR VIP marks. Both of
these latter marks of opposer are dominated by REALTOR
which, again, is identical to applicant’s mark.
We turn next to the second du Pont factor, that is, the
similarity or dissimilarity of the parties’ respective goods
and/or services. As has been often stated, it is not
necessary that the goods and/or services of the parties be
similar or competitive, or even that they move in the same
channels of trade to support a holding of likelihood of
confusion. It is sufficient that the respective goods
and/or services of the parties are related in some manner,
and/or that the conditions and activities surrounding the
marketing of the goods and/or services are such that they
would or could be encountered by the same persons under
circumstances that could, because of the similarity of the
marks, give rise to the mistaken belief that they originate
from the same producer. In re Martin’s Famous Pastry
Shoppe, Inc., 748 F.2d 1565, 223 USPQ 1289 (Fed. Cir. 1984);
and In re International Telephone & Telegraph Corp., 197
USPQ2d 910 (TTAB 1978). Moreover, the greater the degree of
Opposition No. 91125778
5
similarity between the parties’ marks, the lesser the degree
of similarity between the parties’ goods and/or services
that is required to support a finding of likelihood of
confusion. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d
1687 (Fed. Cir. 1993); and In re Opus One Inc., 60 USPQ2d
1812 (TTAB 2001).
Insofar as opposer’s registrations cover real estate
related services, opposer has not established that these
services and tires are related. And, indeed, we find that
these real estate services and tires are not commercially
related. Although opposer’s primary services relate to real
estate, opposer is quick to point out that “[p]articularly
relevant to the confusion likely to arise out of Applicant’s
use of its mark is Opposer’s membership service program
entitled the REALTOR VIP member benefits program.” (Brief,
p. 7). According to opposer, it, like many other trade and
professional membership associations, has established an
affinity program for the benefit of its members. The
programs, opposer claims, are a natural and expected
function of such membership organizations. Opposer states
that these programs provide special benefits or value to the
members who purchase a vendor’s product or service, while at
the same time providing licensing income to the membership
organization through the vendor’s use of opposer’s marks.
One of opposer’s programs is related to the purchase of
Opposition No. 91125778
6
automobiles whereby a member participant qualifies for a
$500 cash allowance on certain models. Opposer goes on to
argue as follows:
[A]lthough some of the products and
services included in Opposer’s REALTOR
VIP program are directly related to the
real estate business (e.g., professional
liability insurance), other products and
services offered by REALTOR VIP vendors
are not related to real estate (e.g.,
museum membership, flowers and cars).
Thus, in assessing the likelihood of
confusion it is insufficient to compare
real estate services and programs with
tires as Applicant has done. Instead,
the assessment must consider whether
members of Opposer, having seen the
REALTOR Family marks used in connection
with the purchase of consumer products
and services unrelated to real estate
such as museum membership, flowers and
cars, would be likely to believe that
the use of the same mark in connection
with another consumer product, namely,
tires, might be confused so as to
believe incorrectly that those tires are
associated with Opposer through
Opposer’s REALTOR VIP membership
benefits program.
To be sure, Opposer has not and does not
claim that others would be likely to
believe, incorrectly, that Opposer
manufactures or sells tires. What
Opposer does claim, and what is in fact
almost certainly true, is that members
of Opposer will misunderstand
Applicant’s use of the REALTOR mark on
tires to be pursuant to Applicant’s
participation in the REALTOR VIP program
or other program of Opposer, and thus
indicative of the existence of a
relationship between Applicant and
Applicant’s tires and Opposer. Members
of Opposer are likely to see a direct
parallel between Applicant’s use of the
REALTOR mark on tires and Opposer’s
Opposition No. 91125778
7
allowing its REALTOR Family of marks to
be used to identify other products or
services of third parties whom Opposer
is recommending to its members.
(Brief, pp. 8-9).
Thus, we will focus our attention, as opposer has done, on
the likelihood of confusion between opposer’s REALTOR VIP
mark and its association services related to group
purchasing programs rendered thereunder, and applicant’s
mark REALTOR for tires.
The fact that applicant’s mark may call to mind
opposer’s REALTOR mark is not dispositive of the likelihood
of confusion claim herein. Likelihood of confusion under
Section 2(d) means more than the likelihood that relevant
purchasers will recall a mark on seeing the same mark used
by another.7 It must also be established that “there is a
reasonable basis for the public to attribute the particular
product or service of another to the source of the goods or
services associated with the famous mark.” University of
Notre Dame Du Lac v. J.C. Gourmet Food Imports Co., Inc.,
703 F.2d 1372, 217 USPQ 505, 507 (Fed. Cir. 1983), aff’g 213
USPQ 594 (TTAB 1982). See also: Jacobs v. International
Multifoods Corp., 668 F.2d 1234, 212 USPQ 641, 642 (CCPA
1982), aff’g 211 USPQ 165 (TTAB 1981); In re Ferrero, 479
7 See generally 4 J.T. McCarthy, McCarthy on Trademarks and
Unfair Competition, § 24:70 (4th ed. 2001): “Difference between
dilution and likelihood of confusion.” A dilution claim was not
raised in the present proceeding.
Opposition No. 91125778
8
F.2d 1395, 178 USPQ 167 (CCPA 1973); Viacom International
Inc. v. Komm, 46 USPQ2d 1233 (TTAB 1998); Original
Appalachian Artworks, Inc. v. Streeter, 3 USPQ 1717 (TTAB
1987); and American Express Co. v. Payless Cashways, Inc.,
222 USPQ 907 (TTAB 1984). Here, the record falls short of
establishing the reasonable basis contemplated by the
Federal Circuit. As applicant points out: “The only
connection between Opposer, and its marks, and the
goods/services of the others under its VIP program, is the
discount provided and not the goods/services themselves. In
other words, what Opposer provides as a benefit to its
members is the discount, and not the actual goods/services.
Otherwise, there is no connection between Opposer and the
source of the discounted good/service.” (Brief, pp. 7-8).
A factor mentioned by opposer, and one that is
significant if established, is fame. According to opposer,
its REALTOR mark “enjoys significant fame within the real
estate field.” (Reply Brief, p. 10).8 Opposer points to
its long use of the mark; its current membership in excess
of 900,000 members (which, according to opposer, makes it
the largest professional association in the country); and
8 In its main brief, opposer cites to five relevant du Pont
factors as supporting its claim of likelihood of confusion in
this case. (Brief, p. 9). Conspicuously absent from this
discussion in the main brief is a reference to the du Pont factor
of fame.
Opposition No. 91125778
9
its ongoing advertising campaign that, in 2002, exceeded $15
million.9
Although it may be likely opposer could establish that
its REALTOR mark is famous in the real estate field, the
record before us simply falls short of establishing this
fame. See Hard Rock Café Licensing Corp. v. Elsea, 48
USPQ2d 1400 (TTAB 1998). Cf. Bose Corp. v. QSC Audio
Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir.
2002); Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d
1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose
Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed.
Cir. 1992). In any event, even if it were shown that
9 Opposer did not take any testimony in this proceeding, but
rather chose to introduce its case by way of notices of reliance.
Although applicant has not questioned the facts underlying
opposer’s assertion of fame, the manner in which these facts were
introduced is questionable. With respect to its purported long
use of the mark REALTOR, opposer has pointed to its dates of
first use set forth in its registrations. We would point out,
however, that the allegation in a registration of a date of use
is not evidence on behalf of the registrant in an inter partes
proceeding; to be relied upon by the registrant, a claimed date
of use of a mark must be established by competent evidence.
Trademark Rule 2.122(b)(2). See Levi Strauss & Co. v. R. Josephs
Sportswear Inc., 28 USPQ2d 1464 (TTAB 1993). See also TBMP §
704.04 (2d ed. rev. 2004). Further, opposer has relied upon
printed publications (“REALTOR” magazine) to establish membership
numbers and 2002 advertising expenditures. However, printed
publications are admissible and probative only for what they show
on their face, not for the truth of the matters contained
therein, unless a competent witness has testified to the truth of
such matters. See Midwest Plastic Fabricators Inc. v.
Underwriters Laboratories Inc., 12 USPQ2d 1267, 1270 n. 5 (TTAB
1989), aff’d, 906 F.2d 1568, 15 USPQ2d 1359 (Fed. Cir. 1990);
Food Producers, Inc. v. Swift & Co., 194 USPQ 299, 301 n. 2 (TTAB
1977); and Litton Industries, Inc. v. Litronix, Inc., 188 USPQ
407, 408 n. 5 (TTAB 1975). See also TBMP § 704.08 (2d ed. rev.
2004). As indicated above, these facts, even if true, fail to
establish the fame of opposer’s REALTOR mark.
Opposition No. 91125778
10
opposer’s REALTOR mark is famous for its real estate-type
services, that fame is unlikely to extend to REALTOR VIP for
specifically distinct services such as those listed in
Registration No. 2615872, “association services, namely,
developing group purchasing programs and identifying vendors
who have agreed to provide discounts or other enhancements
on their goods and services for applicant’s members.” There
is no evidence of record that opposer has marketed tires (or
any other consumer product) under the REALTOR marks, nor is
there any evidence to suggest that other membership
organizations with similar group purchasing programs also
market products, both under the same or similar mark.
Simply put, opposer has not shown that it has become known
for the sale of any consumer products like tires, or that
its REALTOR mark has become identified with such goods. See
G. H. Mumm & Cie v. Desnoes & Geddes Ltd., 917 F.2d 1292, 16
USPQ2d 1635, 1639 (Fed. Cir. 1990) [strength of opposer’s
mark for sparkling wines does not extend to other alcoholic
beverages such as beer]. To hold otherwise would result in
giving opposer a right in gross which is contrary to
principles of trademark law and to Section 2(d) of the
Trademark Act. See University of Notre Dame Du Lac v. J.C.
Gourmet Food Imports Co., Inc., supra. See also Enterprise
Rent-A-Car Co. v. Advantage Rent-A-Car Inc., 330 F.3d 1333,
66 USPQ2d 1811 (Fed. Cir. 2003).
Opposition No. 91125778
11
For the reasons discussed above, we find that the
relatively sparse evidence of record does not support a
finding that there is a likelihood of confusion between any
of opposer’s marks and applicant’s mark. Perhaps on a more
complete record, a different result would pertain, but we
are, of course, constrained to make our decision based on
the pleaded claim and the particular record before us in any
given case.
Decision: The opposition is dismissed.