NextHome, Inc.v.Mainstreet Property Group, LLC

Trademark Trial and Appeal Board

Dec 1, 2017

No. 91231109 (T.T.A.B. Dec. 1, 2017)

This Opinion is not a
Precedent of the TTAB

Mailed: December 1, 2017

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

NextHome, Inc.
v.
Mainstreet Property Group, LLC
________

Opposition No. 91231109
_______

Dwight D. Lueck and Caitlin R. Byczko of Barnes & Thornburg LLP
for NextHome, Inc.

Bradley M. Stohry of Reichel Stohry LLP for
Mainstreet Property Group, LLC.
_____

Before Zervas, Cataldo and Adlin,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
Mainstreet Property Group, LLC (“Applicant”) seeks to register on the Principal
Register the standard character mark NEXT HOMES for “providing assisted living
facilities” in International Class 43 and “providing long-term care facilities for senior
Opposition No. 91231109
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care; providing short-term rehabilitation services for senior care” in International
Class 44.1
NextHome, Inc. (“Opposer”) asserts, inter alia, ownership of (i) Registration
No. 21928072 (hereinafter “the ’807 Registration”) for the typed3 mark NEXTHOME
for “financial services, namely, real estate brokerage services and mortgage
brokerage services” in International Class 36; and (ii) Registration No. 48376664 for
the standard character mark NEXTHOME for services including “financial services,
namely, real estate brokerage services and mortgage brokerage services; real estate
service, namely, rental property management; real estate consultation; real estate
brokerage services; real estate procurement for others” in International Class 36. As
grounds for opposition, Opposer alleges a likelihood of confusion between its marks
and Applicant’s mark under Trademark Act Section 2(d), 15 U.S.C. § 1052(d).
Applicant, in its answer, denied the salient allegations in the amended notice of
opposition.

1 Application Serial No. 87009536, filed April 21, 2016, pursuant to Section 1(b) of the
Trademark Act, 15 U.S.C. § 1051(b), asserting a bona fide intent to use the mark in
commerce.
2 Registered September 29, 1998, renewed September 24, 2008.
3 Prior to November 2, 2003, “standard character” marks were known as “typed” drawings. A
typed mark is the legal equivalent of a standard character mark. In re Viterra Inc., 671 F.3d
1358, 101 USPQ2d 1905, 1909 n.2 (Fed. Cir. 2012) (“until 2003, ‘standard character’ marks
formerly were known as ‘typed’ marks.”).
4 Registered October 20, 2015.
Opposition No. 91231109
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Accelerated Case Resolution
On February 2, 2017, the parties filed a Stipulation “to have the case resolved
pursuant to the Board’s Accelerated Case Resolution (‘ACR’) procedure.”5 The parties
tried the case pursuant to the Stipulation, which provides in relevant part:
4. Opposer files its brief and supporting evidence no later
than June 19, 2017.
5. Applicant files its brief and supporting evidence no later
than July 19, 2017.
6. Opposer files its rebuttal brief and supporting evidence
no later than August 3, 2017.
7. Applicant files its rebuttal brief and supporting evidence
no later than August 18, 2017.6
***
15. The parties will utilize summary judgment format for
their briefs.
Briefing and Motion to Strike
On August 11, 2017, Opposer moved to strike7 evidence Applicant filed for the first
time with a second notice of reliance submitted on the same day as, and discussed in,
its rebuttal brief. Opposer maintains that permitting evidence to be filed with
Applicant’s rebuttal brief is “inapposite to the standard rules of evidence and Board
procedure. … It does not make logical sense that a party in the position of the

5 5 TTABVUE.
6 5 TTABVUE 2-3.
7 38 TTABVUE.
Opposition No. 91231109
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defendant would be allowed to raise new and never before disclosed evidence in a sur-
reply. Opposer maintains that the Stipulation does not grant Applicant this right.”8
Because the Stipulation allows for the submission of supporting evidence with
each brief that may be filed, Opposer and Applicant each filed new evidence with
their main briefs, and the Stipulation provides that the parties will use the summary
judgment format for briefs (rebuttal evidence may be filed with a rebuttal brief in the
summary judgment context), we find that Opposer’s interpretation of the Stipulation
is erroneous, and deny its motion to strike the evidence filed with Applicant’s rebuttal
brief.
The Record
In addition to the pleadings, the record automatically includes the involved
application file pursuant to Trademark Rule 2.122(b), 37 C.F.R. § 2.122(b), and the
parties’ Stipulation9 which sets forth certain agreed facts and makes of record, inter
alia, various file histories, press releases, third-party registrations, webpages,
agreements, financial information, responses to discovery requests (Interrogatory
Requests, Requests for Admissions and Requests for Production), emails and news
articles. In addition, the evidence of record consists of the following:

8 38 TTABVUE 3; Stip. ¶¶ 3-4, 5 TTABVUE 3.
9 7-28 TTABVUE.
Opposition No. 91231109
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● Opposer’s first and second notices of reliance, submitting the declaration
of James Dwiggins, its Chief Executive Officer, and exhibit,10 and Mr.
Dwiggins supplemental declaration and exhibit.11
● Applicant’s first notice of reliance submitting the affidavit of Christopher
J. Lukaart, its Executive Vice President, and exhibits;12 and second notice of
reliance (discussed above) submitting definitions of various terms, CDC
website information regarding nursing homes and assisted living facilities and
an article on aging.
Standing
Standing is a threshold issue that must be proven by a plaintiff in every inter
partes case. To establish standing in an opposition or cancellation proceeding, a
plaintiff must show “both a ‘real interest’ in the proceedings as well as a ‘reasonable
basis’ for its belief of damage.” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753
F.3d 1270, 111 USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports,
Inc., v. Lacy, 102 USPQ2d 1036, 1041 (TTAB 2012)); Ritchie v. Simpson, 170 F.3d
1092, 50 USPQ2d 1023, 1025 (Fed. Cir. 1999); Lipton Indus., Inc. v. Ralston Purina
Co., 670 F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
Opposer has established its standing through its submission of printouts from the
USPTO’s TSDR database of its pleaded registrations for NEXTHOME, which

10 29 TTABVUE.
11 30 TTABVUE.
12 33 TTABVUE.
Opposition No. 91231109
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demonstrate that the registrations are valid and subsisting, and owned by Opposer.13
See, e.g., Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed.
Cir. 2000) (party’s ownership of pleaded registration establishes standing). Applicant
has not contested Opposer’s standing.
Priority
Because Opposer’s pleaded registrations are of record, including the ‘807
registration, and because Applicant has not filed a counterclaim to cancel Opposer’s
pleaded registrations, priority is not an issue with respect to the services covered by
the 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)).
Likelihood of Confusion
We now consider Opposer’s claim of likelihood of confusion pursuant to Section
2(d) of the Trademark Act. We focus on the ‘807 registration for the mark
NEXTHOME in typed form because the services identified in that registration are
closest to the services set forth in the subject application. If there is no likelihood of
confusion with respect to the mark of this registration, there will be no likelihood of
confusion with respect to Opposer’s other pleaded marks. See The North Face Apparel
Corp. v. Sanyang Indus. Co., 116 USPQ2d 1217, 1225 (TTAB 2015).
Our determination is based on an analysis of all of the facts in evidence that are
relevant to the factors bearing on the issue of likelihood of confusion. In re E. I.

13 See Complaint, 1 TTABVUE 7-44.
Opposition No. 91231109
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du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also In
re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep in mind that “[t]he
fundamental inquiry mandated by §2(d) goes to the cumulative effect of differences
in the essential characteristics of the goods [or services] and differences in the
marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ
24, 29 (CCPA 1976). We also consider other du Pont factors which the parties have
discussed in their briefs and about which they have introduced evidence.
The Marks
We consider the marks in their entireties as to appearance, sound, connotation
and commercial impression to determine the similarity or dissimilarity between
them. In re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (quoting
du Pont); Palm Bay Imp., 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 the parties.” Coach Servs.,
Inc. v. Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir.
2012) (citing Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901,
1905 (TTAB 2007)).
The only difference between the marks is the space between the terms NEXT and
HOME(S) and the additional letter “S” in Applicant’s mark. These minute changes
do not distinguish the marks. See, e.g., Weider Publications, LLC v. D & D Beauty
Opposition No. 91231109
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Care Co., LLC, 109 USPQ2d 1347, (TTAB 2014) (“It is well established that
trademarks and/or service marks consisting of the singular and plural forms of the
same term are essentially the same mark.”). Thus, we find the marks to be very
similar in appearance, sound, connotation and commercial impression. Applicant
does not dispute this, and states, “[t]he only factor that arguably favors a finding of
likelihood of confusion is the factor that considers the similarity of the marks.”14
Services and Purchasers
Turning next to the relationship between Opposer’s and Applicant’s services, it is
well established that the services need not be similar or competitive, or even offered
through the same channels of trade, to support a holding of likelihood of confusion. It
is sufficient that the respective services are related in some manner, and/or that the
conditions and activities surrounding the marketing of the 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 source. See Hilson Research, Inc. v. Society for Human
Resource Management, 27 USPQ2d 1423 (TTAB 1993); In re Int’l Telephone &
Telephone Corp., 197 USPQ 910, 911 (TTAB 1978). The issue, of course, is not
whether purchasers would confuse the services, but rather whether there is a
likelihood of confusion as to the source thereof. In re Rexel Inc., 223 USPQ 830 (TTAB
1984). Additionally, “the greater the degree of similarity between the applicant's
mark and the cited registered mark, the lesser the degree of similarity between the

14 Applicant’s rebuttal brief at 5, 37 TTABVUE 7.
Opposition No. 91231109
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applicant's goods or services and the registrant's goods or services that is required to
support a finding of likelihood of confusion.” Time Warner Entertainment Co. v. Jones,
65 USPQ2d 1650, 1661 (TTAB 2002) (citing In re Shell Oil Co., 992 F.2d 1204, 26
USPQ2d 1687 (Fed. Cir. 1993); In re Concordia Int’l Forwarding Corp., 222 USPQ
355 (TTAB 1983)).
The ‘807 registration recites, inter alia, “financial services, namely, real estate
brokerage services” and Applicant’s identified services are “providing assisted living
facilities” and “providing long-term care facilities for senior care; providing short-
term rehabilitation services for senior care.” We focus on these services.
Opposer made of record various webpages that demonstrate Opposer offering its
services as they concern senior citizens making future housing decisions:
1.15

15 23 TTABVUE 8.
Opposition No. 91231109
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2.16

16 23 TTABVUE 429.
Opposition No. 91231109
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3.17

Further, Opposer submitted the testimony of Mr. Dwiggins who explains the
intersection of Applicant’s and Opposer’s services:
Dwiggins Declaration
18. NextHome franchisees work with both buyers and
sellers of all ages, backgrounds, real estate experience
levels and socioeconomic statuses.
19. NextHome franchisees routinely work with consumers
through the process of selling their homes for purposes of
downsizing. Part of that process is assisting the sellers in

17 23 TTABVUE 23.
Opposition No. 91231109
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relocating to new homes, which will often be assisted living
or transitional care facilities.
20. The consumers targeted by Mainstreet’s [Applicant’s]
assisted living facilities, long-term facilities for senior care
and short term rehabilitation for senior care overlap with
the consumers who interact with and use the NextHome
and NextHome franchisee services.18
Dwiggins Supplemental Declaration
3. REALTORS who want to specialize in the real estate
needs of the older population of consumers have the
opportunity to earn the Seniors Real Estate Specialist
(SRES) designation by taking the SRES course designed
and conferred by the Center for Specialized REALTOR
(CSRE) of the National Association of REALTORS®.
***
5. The NEXTHOME agents who have received the SRES
certification are often very focused on specifically
marketing to seniors in the real estate market.
6. As part of a consultation with a potential consumer, an
SRES certified agent is likely to walk through a list of
housing options for the consumer, including assisted living
facilities and long-term/short-term care facilities.19
See also:

● http://www.ageinplace.org/Local-Chapters/GreaterAtlanta/Local-Resources/
provider/coldwell-bankerresidential-brokerage stating:

I have been actively involved in the senior Provider
Community in Atlanta since 1998. I started working with
seniors who were friends of the family and quickly added
more clients who were interested in downsizing and
families who needed to move loved ones to assisted living
communities. My knowledge of the real estate market and
my circle of senior provider professionals have made my
services invaluable to my clients.

18 29 TTABVUE 7.
19 30 TTABVUE 4.
Opposition No. 91231109
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During my time working in this specialty I have worked
with active seniors looking to downsize or move to our area
to be closer to children and grandchildren. I have
particularly specialized in working with families who are
struggling with the process of moving aging parents to a
home that better suits their needs. Many of my clients are
dealing with these issues from out-of-town and need the
specialized services I provide more than ever.20
● http://www.remax.com/realestateagentoffice/pleasanthill-ca-94523-donald
flaskerud-id25967189.html

We represent all types of sellers: move-up sellers, retirees,
and owners that are moving into assisted living.21
In addition, Opposer made of record the following third-party registrations which
demonstrate that the same mark is registered for both Applicant’s services and some
of Opposer’s identified services:
Trademark Reg. No. Services

4956286 Class 36: Real estate services, namely, real
estate brokerage services in the areas of
residential real estate, assisted living, and long
term care facilities, and real estate
management; property acquisition and property
management services for senior housing,
including independent living, assisted living
and memory care assisted living communities.

Class 43: Providing retirement living and
assisted living facilities; … providing
independent living residences and living
facilities; … retirement living and assisted
living facility services, namely, providing
retirement homes and assisted living homes;
providing assisted living housing, assisted living
for those requiring memory care, and
retirement housing for seniors.

20 Stip. of Facts, Exh. D(27), 21 TTABVUE 127.
21 Stip. Exh. D(28), 21 TTABVUE 139.
Opposition No. 91231109
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Class 44: Nursing homes; providing long term
care facilities; … nursing home services ….

2748010 Class 35: Providing operational management of
health care facilities for others, namely, nursing
home facilities, retirement home facilities, and
residential long term health care facilities.

Class 36: Providing property management
services, namely, leasing of real property and
real estate brokerage services … .

Class 42: Providing housing and accommodation
services, namely, retirement and nursing home
services, health care services, and on-premises
assisted living and skilled nursing care services.

3539425 Class 36: Leasing of real estate; Leasing of real
property; Real estate brokerage … .

Class 43: Providing assisted living facilities;
Retirement homes … .
VALIDUS SENIOR
LIVING
4956285 Class 36: Real estate services, namely, real
estate brokerage services in the areas of
residential real estate, assisted living, and long
term care facilities … property acquisition and
property management services for senior
housing, including independent living, assisted
living and memory care assisted living
communities.

Class 43: Providing retirement living and
assisted living facilities; providing elder care
services; … providing independent living
residences and living facilities; … retirement
living and assisted living facility services,
namely, providing retirement homes and
assisted living homes … .

Class 44: Nursing homes; providing long term
care facilities; providing healthcare for elderly,
disabled and retired persons; nursing home
services; providing memory care facilities,
namely, health care services in the field of
memory care.
Opposition No. 91231109
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EXCELLENCE
THAT
TRANSFORMS
LIVES
4221964 Class 36: Land acquisition, namely, real estate
brokerage … .

Class 43: Providing assisted living facilities;
providing congregate living facilities; public
housing services; consultancy services in the
field of menu planning for others; providing
assistance to senior citizens seeking to determine
assisted living facilities appropriate for their
needs

Class 44: Nursing care; nursing homes … .

5102354 Class 36: Real estate services, namely, … real
estate agency services … .

Class 43: Retirement homes; management and
provision of retirement accommodation facilities,
namely, providing assisted living facilities…

Class 44: Convalescent homes, nursing homes,
rest homes … domiciliary care services facilities,
namely, home health care; nursing services … .

Although third-party registrations, which are based on use in commerce, “are not
evidence that the marks shown therein are in use on a commercial scale or that the
public is familiar with them, [they] may [however] have some probative value to the
extent that they may serve to suggest that such goods or services are the type which
may emanate from a single source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467,
1470 n.6 (TTAB 1988); In re Albert Trostel & Sons Co., 29 USPQ2d 1783 (TTAB 1993).
Opposition No. 91231109
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Applicant argues that “the services are not competitive, are not used together, do
not perform the same or related purposes, have no viable relationship, and are simply
not the sorts of services that emanate from the same source.”22
We do not agree with Applicant and find that the evidence establishes a
relationship between Applicant’s services of “providing assisted living facilities”23 and
“providing long-term care facilities for senior care” and Opposer’s “real estate
brokerage services.” Many elderly persons, as well as younger disabled persons, reach
a point in their lives when they are no longer capable of independent living, and must
move into assisted living facilities or long-term care facilities. They, and perhaps
younger family members, will address their housing needs and may even
concurrently seek to sell the family home and locate a future home of the type
provided by Applicant,24 perhaps through the same agent.25 If the need for care is

22 Applicant’s brief at 7, 34 TTABVUE 12.
23 We take judicial notice of the definition of the term “assisted living” from the Random
House Dictionary (Random House, Inc. 2017) at dictionary.com (accessed November 15,
2017): “housing or living arrangements for the elderly, infirm, or disabled, in which
housekeeping, meals, medical care, and other assistance is available to residents as needed.”
The Board may take judicial notice of dictionary definitions, Univ. of Notre Dame du Lac v.
J.C. Gourmet Food Imp. Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ
505 (Fed. Cir. 1983), including online dictionaries that exist in printed format or regular fixed
editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377 (TTAB 2006). Assisted living facilities
are not limited to use by senior citizens, as Applicant maintains in its reply brief at p. 4. 34
TTABVUE 9.
24 Applicant’s franchisees may assist senior citizens in the transition to an assisted living
facility. See Stip. Exh. F(6), 22 TTABVUE 175, stating, “Let Rene Gibbs, Senior Care
Specialist, be your personal advisor throughout the process to keep you informed and make
your transition smoother and more efficient” and “Like a growing number of individuals age
50 and up, you might be considering selling your home to pursue a simpler lifestyle, free from
the worries of home maintenance. Such a decision could entail moving closer to family,
downsizing to a condo or apartment, or moving to a senior community.”
25 See Mr. Dwiggins Supplemental Declaration at ¶ 6; Stip. of Facts, Exh. D(27), 21
TTABVUE 127; Stip. Exh. D(28), 21 TTABVUE 139.
Opposition No. 91231109
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sudden and immediate, the individual may even find himself or herself permanently
in a long term care facility while using the services of a real estate broker, perhaps
with the assistance of a family member. In sum, purchasers of Applicant’s and
Opposer’s services overlap and may use Applicant’s and Opposer’s services at the
same time.
Further, Opposer’s third-party registration evidence suggests that consumers
may consider Applicant’s and Opposer’s services to emanate from a single source. See
In re Mucky Duck Mustard Co., 6 USPQ2d at 1470. Applicant’s argument to the
contrary at p. 8 of its brief26 regarding these registrations is not persuasive because
the evidence does not reveal which are a third party’s “main” services and which are
subsidiary, nor would that matter in any event. It is also irrelevant – as Applicant
contends ― that Opposer’s admitted competitors (e.g., Century 21, Coldwell Banker,
RealtyOne, Berkshire Hathaway)27 do not own any trademark registrations that
cover International Class 43 or 44 services.
In addition, as the Federal Circuit pointed out, “even if the goods [or services] in
question are different from, and thus not related to, one another in kind, the same
goods [or services] can be related in the mind of the consuming public as to the origin
of the goods [or services]. It is this sense of relatedness that matters in the likelihood
of confusion analysis.” Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894,
1898 (Fed. Cir. 2000).

26 34 TTABVUE 13.
27 Mainstreet Exhibit AA, Opposer’s Response to RFP No. 10, 28 TTABVUE 564.
Opposition No. 91231109
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Trade Channels
Opposer’s and Applicant’s identified services do not contain restrictions regarding
the channels of trade or classes of purchasers. Accordingly, the Board must assume
that these services are available in all the normal channels of trade to all the usual
purchasers for such services, which, the evidence reveals, overlap. See Packard Press,
Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 56 USPQ2d 1351, 1357 (Fed. Cir. 2000);
Octocom Sys., Inc. v. Houston Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783,
1787 (Fed. Cir. 1990); Paula Payne Prods. v. Johnson Publ’g Co., 473 F.2d 901, 177
USPQ 76, 77-78 (CCPA 1973). The record includes the following evidence:
● https://www.eventbrite.com/o/the-ihara-team-thecomplete-
solutiontm-4108834911

“Dan Ihara (RA) & Julie Ihara (RA) along with their team of Real Estate
Professionals have been listed in the Top 100 Real Estate Agents in Hawaii for
the last 10 years in a row by Hawaii Business Magazine,” with a link to “FREE
Senior Living Options Seminar” at “Hawaii Kai Retirement & Assisted Living
Community, Honolulu.”28

● http://bullerhomes.com/senior-living-communities

Burnhill Realty Brokerage of Coldwell Banker, listing long term care and
assisted living communities, such as La Salle Park Retirement Community, as
“a resource to help you identity the various senior-oriented communities that
are available locally.”29

28 Stip. Exh. D(2); 19 TTABVUE 68. See also 19 TTABVUE 197, regarding the Dan and Julie
Ihara RA webpages stating “The Ihara’s Free Senior Living Options Seminar will provide
information that will help you with this challenging transition”; and “Hawaii *** will offer a
free seminar Senior Living Options designated to address … ‘What are my choices in Senior
Living Communities and what [illegible] are the differences?’”
29 Stip. Exh. D(28), 21 TTABVUE 133-134.
Opposition No. 91231109
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● http://www.berkshirehathawayhs.com/pages/senior advisor

“Find senior care you can trust with a comprehensive directory listing all the
assisted living, nursing homes, and in-home care services available in the U.S.”
and “View Articles related to Seniors and Senior Care.”30

● http://smmhawaii.com/aboutus.html

“Senior Move Managers, LLC understands that there are many physical,
psychological, and emotional issues that arise when downsizing our lives. We
serve as caring and compassionate consultants to seniors and their family with
the goal for minimizing stress for everyone. We’re a one stop shop that helps
seniors make a stress-free move from their old house to their new home. We
understand your needs are unique and we’re trained to create a customized
plan that addresses your specific situation.”31

● https://www.thepreferred realty.com/senior-services/

“In an effort to better serve those who might desire a change in lifestyle, we
have nurtured a relationship with several area retirement communities. Our
goal is to become acquainted with as many communities as possible so we may
help our customers to find a community that is just right for them. We can
arrange for a consultation or even an overnight visit at the center of your
choice. Listed below is an overview of the types of care available.”32

30 Stip. Exh. D(34), 22 TTABVUE 41.
31 Stip. Exh. D(10), 20 TTABVUE 12.
32 Stip. Exh. D(35), 22 TTABVUE 60.
Opposition No. 91231109
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● https://www.realtyonegroup.com/site/search_v5/33

Applicant argues that the trade channels are not related:
The only commonality between Applicant’s and Opposer’s
marketing approaches is that both companies use websites
and other internet resources to promote their services.
However, the same could be said of most any reasonably
sophisticated company. As a result, the fact that both
parties advertise their services via the internet is of no
consequence. See Parfums de Couer Ltd. v. Lazarus, 83
U.S.P.Q.2d 1012, 1021 (TTAB 2007) (“[T]he mere fact that
goods and services may both be advertised and offered
through the Internet is not a sufficient basis to find that
they are sold through the same channels of trade. The

33 Stip. Exh. D(35), 22 TTABVUE 67, depicting RealtyOneGroup advertising units at
Midtown Assisted Living and Memory Care.
Opposition No. 91231109
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Internet is such a pervasive medium that virtually
everything is advertised and sold through the Internet.”).34
This internet evidence, however, demonstrates that real estate brokerage
services, particularly brokerage services directed to seniors, are promoted in the same
webpages, or through links to other webpages, as assisted living facility services. We
therefore find that Opposer has established that the trade channels for real estate
brokerage services and Applicant’s services overlap.
Strength of Opposer’s Mark
Marks vary along a spectrum from very strong to very weak. Joseph Phelps
Vineyards, LLC v. Fairmont Holdings, LLC, 857 F.3d 1323, 122 USPQ2d 1733, 1734
(Fed. Cir. 2017). In determining strength of a mark, we consider both inherent
strength, based on the nature of the mark itself, and commercial strength.
Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458, 1476
(TTAB 2014); see also In re Chippendales USA Inc., 622 F.3d 1346, 96 USPQ2d 1681,
1686 (Fed. Cir. 2010) (“A mark's strength is measured both by its conceptual strength
(distinctiveness) and its marketplace strength (secondary meaning).”). Evidence of
the extensive registration and use of a term by others can be “powerful” evidence of
weakness. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New
Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d 1129, 1136 (Fed. Cir. 2015),
cert. denied, 136 S. Ct. 982 (2016); Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015).

34 Applicant’s brief at 15, 34 TTABVUE 20.
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With regard to inherent strength, we agree that Opposer’s mark is suggestive in
that Opposer’s services involve assisting home buyers in locating and purchasing
their “next home.” Opposer acknowledged in its brief that the parties’ marks “share
the common suggestive meaning of a consumer finding a new place to reside or live.”35
The mark is therefore not inherently strong.
With regard to commercial strength, Opposer argues:
The NEXTHOME Marks are strong by virtue of Opposer’s
extensive use and promotion of the marks in connection
with its services. The evidence in the record confirms that
the NEXTHOME Marks have significant commercial
strength. Opposer has more than 200 NEXTHOME
franchisees in 42 states. … Opposer’s rapid growth further
indicates the strong consumer recognition of the
NEXTHOME Marks.
Since 2014, Opposer has spent more than $1.5 million in
advertising and promoting the NEXTHOME Marks. This
$1.5 million does not include the amounts spent by
Opposer’s 200 plus franchisees. As evidenced by the
websites and promotional materials of Opposer’s
franchisees, the franchisees have spent significant
amounts of money to further advertise and promote the
brand. In addition, NEXTHOME agents close more than
7,000 transactions annually, worth more than $2 billion in
volume.
Further, Opposer is the beneficiary of significant goodwill
that it acquired with U.S. Reg. No. 2192807. Opposer’s
predecessor in interest began use of the NEXTHOME mark
nearly 20 years ago, and the relevant consuming public
now attributes that goodwill to Opposer.36 (citations to the
record omitted.)

35 Applicant’s brief at 17, 34 TTABVUE 22.
36 Opposer’s brief at 14-15, 31 TTABVUE 20-21.
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Opposer’s own use of its mark prior to trial was for just two and one half years,
and there is limited evidence regarding the extent of use by Opposer’s predecessor-
in-interest.37 Also, Opposer provides no contextual evidence regarding, for example,
the sales and advertising figures for its leading competitors or its ranking in market
share with regard to its services, and has provided little or no probative evidence of
the general reputation or critical assessments in the consumer marketplace. Cf., Bose
Corp. v. QSC Audio Products, Inc., 293 F.3d 1367, 63 USPQ2d 1303, 1309 (Fed. Cir.
2002) (“some context in which to place raw statistics is reasonable”); Lebanon
Seaboard Corp. v. R&R Turf Supply Inc., 101 USPQ2d 1826, 1831 (TTAB 2012) (“[w]e
have no context for opposer’s advertising and sales figures,” or its other evidence of
commercial strength, “such as how the figures for the [NEXT HOME services]
compare with that for other brands of” competing services).
Applicant argues that the “evidence demonstrates that the NEXTHOME Mark is
entitled to a very narrow scope of protection because of … the number of similar
marks in use.”38 Applicant introduced: (i) a “Next Home Program Guide”39 from the
Indiana Housing & Community Development Authority regarding “a down payment
assistance (‘DPA’) that can be used with either FHA or Conventional financing”40;
(ii) a webpage identifying NEXTHOUSE as “a superior modern design” of a house;41

37 See Dwiggins Decl. ¶ 9, 29 TTABVUE 5; Dwiggins Exh. A, 29 TTABVUE 9-11.
38 Applicant’s brief at 16, 34 TTABVUE 21.
39 Stip. Exh. S, 28 TTABVUE 393 - 416.
40 Stip Exh. S, 28 TTABVUE 396.
41 Stip Exh. S, 28 TTABVUE 422.
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and (iii) a webpage identifying NEXTHOME, which is a “‘living lab’ within
NextEnergy’s testing and validation platforms.”42 This evidence has limited probative
value because it pertains to goods and services that differ from Opposer’s services.
The remaining six webpages are from government authorities and third-party
businesses using “Next Home” or “Next” combined with generic terms (e.g., NEXT
REALTY, NEXT RE and NEXT SALES & MARKETING) in connection with real
estate brokerage and a government loan program that assists homebuyers in
obtaining down payment or other assistance in purchasing a new home.43 These
websites indicate that NEXT is not infrequently used in the housing field, including
for real estate brokerage services. However, this evidence is quantitatively limited
and thus does not establish any significant commercial weakness in the term NEXT.
Applicant also introduced third-party Principal Register registrations to
demonstrate that the registered mark is weak, including the following:44

42 Stip Exh. S, 28 TTABVUE 421.
43 Stip. Exh. S, 28 TTABVUE 417 – 420, 422 – 424.
44 Applicant’s brief at 18, 34 TTABVUE 23. See also Stip. Exh. R(1), 28 TTABVUE 338-60.
Opposition No. 91231109
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Third-party registrations may be relevant to show the sense in which a mark is
used in ordinary parlance; that is, an element common to both parties’ marks may
have a normally understood and well-recognized descriptive or suggestive meaning,
leading to the conclusion that that segment is inherently weak. Jack Wolfskin 116
USPQ2d at 1136. The quantity of this evidence is much less than the evidence of
registrations and actual use in Juice Generation and Jack Wolfskin. In Juice
Generation, there were at least twenty-six relevant third-party uses or registrations
of record, 115 USPQ2d at 1672 n.1, and in Jack Wolfskin, there were at least fourteen,
116 USPQ2d at 1136 n.2.
Opposition No. 91231109
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Thus, although we have found that Opposer’s mark is not inherently strong, we
point out that even weak marks are entitled to protection. See Matsushita Elec. Co.
v. National Steel Co., 442 F.2d 1383, 170 USPQ 98, 99 (CCPA 1971) (“Even though a
mark may be ‘weak’ in the sense of being a common word in common use as a
trademark, it is entitled to be protected sufficiently to prevent confusion from source
arising”).
Purchaser Care
Opposer has not addressed the du Pont factor regarding purchaser care in any
meaningful way, while Applicant maintains:
Opposer’s consumers are also making a major life decision
in deciding to buy and/or sell a home. The decision
regarding which realtor to assist the consumer with this
process is likewise an important decision and not one that
most consumers would make without some research and
consideration, particularly as a realtor obtains a
significant percentage of the sale price of a home.
Moreover, like Applicant’s services, Opposer’s services
cannot be obtained off the shelf or bought on impulse, but
can only be obtained after contacting and working directly
with Opposer.45
With regard to its services, Applicant states:
[T]he simple fact is that Applicant’s consumers are going
to take extra care in making the decision regarding Long-
Term Care Facility Services, as it is a major life decision
that involves significant cost. Because of the great
importance in making the right choice for care of an elderly
patient, consumers considering Applicant’s Long-Term
Care Facility Services will be well informed about such
services. Moreover, these consumers will need to work
directly with Applicant on availability of space and the
specifics of the arrangement, including how the costs will
be handled. … These informed consumers who are working

45 Applicant’s brief at 14, 34 TTABVUE 19.
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directly with Applicant on logistics are not going to be
confused about who they are dealing with.46
Opposer’s and Applicant’s services involve significant life decisions for their
purchasers; we therefore find that purchases of Opposer’s and Applicant’s services
will be made with care. See Primrose Ret. Cmtys., LLC v. Edward Rose Senior Living,
LLC, 122 USPQ2d 1030, 1038-39 (TTAB 2016) (“We find that even in the case of the
least sophisticated purchaser, a decision as important as choosing a senior living
community will be made with some thought and research, even when made hastily.”).
Conclusion
After considering all of the evidence of record as it pertains to the relevant du Pont
factors, including all of the parties’ arguments and evidence, even if not specifically
discussed herein, we find that despite the fact that Applicant's potential purchasers
will likely exercise a high degree of care and that Opposer’s mark is not inherently
strong, in view of the facts that the marks are very similar, Applicant’s services and
Opposer’s services are related and move in the same channels of trade and are sold
to the same purchasers, Applicant’s mark NEXT HOMES for “providing assisted
living facilities” and “providing long-term care facilities for senior care; providing
short-term rehabilitation services for senior care” is likely to cause confusion with the
registered mark NEXTHOME for “financial services, namely, real estate brokerage
services and mortgage brokerage services.” These factors outweigh the degree of care
that customers will exercise and the lack of inherent strength of Opposer’s mark.

46 Applicant’s rebuttal brief at 7, 37 TTABVUE 9.
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Decision: The opposition is sustained and registration to Applicant of its mark
is refused for the International Classes 43 and 44 services.