Norman M. Mazerv.Electronic Realty Associates, L..P.

Trademark Trial and Appeal Board

Jun 30, 1998

CANC (T.T.A.B. Jun. 30, 1998)

Paper No. 19
HANAK/MD
THIS DISPOSITION IS NOT CITABLE
OF THE TTAB 6/30/98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Norman M. Mazer
v.
Electronic Realty Associates, L.P.
_____
Cancellation Nos. 23,341 and 24,964
_____
Paul R. Melletz for Norman M. Mazer
Joseph B. Bowman of Kokjer Kircher Bowman & Johnson for
Electronic Realty Associates, L.P.
_____
Before Seeherman, Hanak and Quinn, Administrative Trademark
Judges.
Opinion by Hanak, Administrative Trademark Judge:
Norman M. Mazer (petitioner) seeks to cancel two
registrations owned by Electronic Realty Associates, L.P.
(respondent). Both registrations are for the mark IF WE
DON’T SELL YOUR HOUSE, WE’LL BUY IT!. The services of both
registrations are identical, namely, “real estate brokerage
services.” The first registration (Reg. No. 1,562,854) -
which is the subject of Can. No. 23,341 – is on the
Supplemental Register. The application which matured into
Cancellation No. 23,341
2
this registration was filed on January 14, 1988. The
registration issued on October 24, 1989. The second
registration (Reg. No. 1,899,160) – which is the subject of
Can. No. 24,964 – is on the Principal Register. The
application which matured into this registration was filed
on January 16, 1990. The registration issued on June 13,
1995.
Can. No. 23,341 was initiated on October 21, 1994. Can.
No. 24,964 was initiated on December 1, 1995. As explained
in this Board’s order of July 2, 1996, on May 17, 1996
respondent filed a motion to consolidate the two
cancellation proceedings. Petitioner filed no objection to
the consolidation request. Because the two proceedings
involved common questions of law and fact, respondent’s
motion was granted.
Both petitions set forth the identical two grounds for
cancellation. First, petitioner alleged that for at least
thirteen years before respondent’s alleged date of first use
(February 1983), petitioner had used the phrase IF WE DON’T
SELL IT, WE’LL BUY IT in connection with his real estate
related services. Petitioner further alleged that said
phrase “has attained substantial value, which is identified
with petitioner.” Finally, petitioner alleged that his
phrase IF WE DON’T SELL IT, WE’LL BUY IT and respondent’s
mark IF WE DON’T SELL YOUR HOUSE, WE’LL BUY IT! are so
Cancellation No. 23,341
3
similar such that their contemporaneous use is likely to
cause confusion, mistake or deception.
Second, petitioner alleged that respondent’s mark IF WE
DON’T SELL YOUR HOUSE, WE’LL BUY IT! is merely descriptive.
Respondent’s answers denied the pertinent allegations
of the petitions for cancellation. In particular,
respondent denied that its mark IF WE DON’T SELL YOUR HOUSE,
WE’LL BUY IT! is merely descriptive. (Answers paragraph 9).
In its answers, respondent set forth the affirmative
defenses of acquiescence, laches, estoppel, estoppel by
laches, estoppel acquiescence and unclean hands. (Answers
paragraph 11). However, in its answers, respondent never in
any manner set forth the claim that petitioner’s phrase IF
WE DON’T SELL IT, WE’LL BUY IT was descriptive of any real
estate related services.
Both parties filed briefs. Neither party requested a
hearing.
As set forth at pages 1-4 of respondent’s brief, the
record in this case consists of the deposition testimony of
petitioner Norman M. Mazer taken on July 17, 1995 (with
exhibits) and the file histories of Reg. Nos. 1,562,854 and
1,899,160. To be perfectly clear, respondent made of record
no evidence. While at page 4 of its brief respondent states
that its record consists of the aforementioned registration
files, in point of fact, pursuant to Trademark Rule 2.122(b)
Cancellation No. 23,341
4
these registration files form “part of the record of the
proceeding without any action by the parties.”
We will consider first petitioner’s claim that
respondent’s mark IF WE DON’T SELL YOUR HOUSE, WE’LL BUY IT!
is merely descriptive of real estate brokerage services.
(Petitions paragraph 9). With regard to respondent’s Reg.
No. 1,562,854 on the Supplemental Register, this allegation
is not a legally sufficient ground to challenge this
registration. It is perfectly permissible to register on
the Supplemental Register a descriptive term or phrase.
Even if petitioner had established that IF WE DON’T SELL
YOUR HOUSE, WE’LL BUY IT! was descriptive of real estate
brokerage services, respondent would still be entitled to
its registration of this phrase on the Supplemental
Register.
As for petitioner’s challenge to respondent’s
registration of this phrase on the Principal Register, a
review of the file of Reg. No. 1,899,160 reveals that
respondent obtained this registration by establishing
pursuant to Section 2(f) of the Lanham Trademark Act that
said phrase had become distinctive of respondent’s real
estate brokerage services. Indeed, in an opinion dated
September 29, 1994 this Board explicitly stated at page 4
that respondent (then applicant) had proven the
“distinctiveness” of its mark IF WE DON’T SELL YOUR HOUSE,
Cancellation No. 23,341
5
WE’LL BUY IT! This decision was in connection with
application Serial No. 74/019,291 which matured into Reg.
No. 1,899,160.
Accordingly, the party plaintiff (petitioner) “has the
initial burden to establish prima facie that the applicant
[respondent] did not satisfy the acquired distinctiveness
requirement of Section 2(f).” Yamaha International v.
Hoshino Gakki, 840 F.2d 1572, 6 USPQ2d 1001, 1005 (Fed. Cir.
1988). See also Omnicom Inc. v. Open Systems, 19 USPQ2d
1876, 1878 (TTAB 1989). While Mr. Mazer did testify that in
his view respondent’s mark IF WE DON’T SELL YOUR HOUSE,
WE’LL BUY IT! is descriptive (Mazer dep. 44-45), the fact
remains that petitioner (Mr. Mazer) simply did not carry his
initial burden of establishing that respondent did not
satisfy the acquired distinctiveness requirement of Section
2(f). Moreover, while Mr. Mazer did testify that in the
early 1970’s there were two or three other real estate
concerns that were using the same phrase which he commenced
using in 1970, namely, IF WE DON’T SELL IT, WE’LL BUY IT, it
must be remembered that respondent did not claim that it
commenced using its slightly different mark (IF WE DON’T
SELL YOUR HOUSE, WE’LL BUY IT!) until 1983. All of the
acquired distinctiveness evidence which respondent (then
applicant) submitted in application Ser. No. 74/019,291
(which matured into Reg. No. 1,899,160) was in the time
Cancellation No. 23,341
6
frame from 1983 to 1992. Thus, even if there were three or
four real estate firms (including petitioner) using the
phrase IF WE DON’T SELL IT, WE’LL BUY IT in the early
1970’s, this would not constitute prima facie evidence that
respondent (as then applicant) did not satisfy the acquired
distinctiveness requirement of Section 2(f) by showing that
between 1983 and 1992 the somewhat different phrase IF WE
DONT SELL YOUR HOUSE, WE’LL BUY IT! had acquired
distinctiveness as indicating real estate brokerage services
originating from respondent.
In sum, with regard to both of respondent’s
registrations, petitioner’s claim that respondent’s mark is
merely descriptive is resolved in favor of respondent and
against petitioner.
We will now consider petitioner’s claim pursuant to
Section 2(d) of the Lanham Trademark Act, namely, priority
of use and likelihood of confusion. Petitioner has
established through his own testimony, supplemented by
exhibits, that he continuously used since 1970 the phrase IF
WE DON’T SELL IT, WE’LL BUY IT in connection with his real
estate brokerage services. In this regard, petitioner has
submitted photocopies of newspaper advertisements for his
real estate brokerage services dating back to 1970 wherein
the phrase IF WE DON’T SELL IT, WE’LL BUY IT appears in
prominent lettering. Indeed, this lettering is just as
Cancellation No. 23,341
7
large as is the lettering utilized to depict petitioner’s
name (Norman M. Mazer). Moreover, in its brief, respondent
has conceded “that petitioner’s first use of his slogan [IF
WE DON’T SELL IT, WE’LL BUY IT] established by competent
evidence in this case … is at least as early as 1987.”
(Respondent’s brief page 7). Because respondent has made of
record no evidence in this proceeding, respondent’s earliest
“proven” first use dates are the filing dates for the two
applications which matured into the two registrations. As
previously noted, the filing date of the application which
matured into the Supplemental Registration is January 14,
1988. The filing date for the application which matured
into the Principal Registration is January 16, 1990. See
Acme-McCrary Corp. v. Oxford, 151 USPQ 721, 722 (TTAB 1966);
Philip Morris Inc. v. He-Man Products, 157 USPQ 200, 201
(TTAB 1968). Thus, respondent by its own failure to offer
evidence and by its admission that petitioner used his
slogan at least as early 1987 has conceded the issue of
priority of use to petitioner.
To be perfectly clear, at page 13 of its brief
respondent makes the following statements: “Second, on
priority of use, petitioner’s first use of his slogan [IF WE
DON’T SELL IT, WE’LL BUY IT] established by competent
evidence in this case … is at least as early as 1987.
[However,] this Board has previously found, in the file
Cancellation No. 23,341
8
history of Registration No. 1,899,160, that registrant
[respondent] has used its slogan [IF WE DON’T SELL YOUR
HOUSE, WE’LL BUY IT!] at least as early as 1983.” However,
the fact that the Board found in an ex parte proceeding that
respondent used its slogan at least as early as 1983 is of
no consequence in this inter partes proceeding. See 4 J.
McCarthy, McCarthy on Trademarks and Unfair Competition
Section 32:95 at page 32-116 (4th ed. 1998). Moreover, in
any event, the record establishes that petitioner made
continuous use of his slogan IF WE DON’T SELL IT, WE’LL BUY
IT since 1970, some 13 years before respondent’s claimed
first use date of 1983 for respondent’s slogan IF WE DON’T
SELL YOUR HOUSE, WE’LL BUY IT! Thus, priority of use rest
in favor of petitioner.
Finally, we find that the slogans of the two parties
(IF WE DON’T SELL IT, WE’LL BUY IT versus IF WE DON’T SELL
YOUR HOUSE, WE’LL BUY IT!) are so similar that when they are
used on identical services (real estate brokerage services)
there is a likelihood of confusion. While not dispositive
of the issue, we note that in a letter dated October 5, 1994
to petitioner, respondent’s general counsel stated that
petitioner’s use of another very similar slogan (IF I DON’T
SELL IT, I’LL BUY IT) constituted an infringement of
petitioner’s registered trademark IF WE DON’T SELL YOUR
HOUSE, WE’LL BUY IT! (Mazer exhibit 31).
Cancellation No. 23,341
9
Thus, we find that petitioner has established the two
elements of his Section 2(d) claim, namely, priority of use
and likelihood of confusion. As previously noted,
petitioner has established that he has made prominent,
continuous use of his slogan IF WE DON’T SELL IT, WE’LL BUY
IT since 1970. Moreover, as also noted, respondent has
never raised the defense that petitioner’s slogan is itself
descriptive of real estate brokerage services. Indeed,
quite to the contrary, respondent has stated in its answers
that the very similar slogan IF WE DON’T SELL YOUR HOUSE,
WE’LL BUY IT! is not descriptive of real estate brokerage
services. (Answers paragraph 9). See also respondent’s
brief page 11. Thus, the possible issue of the
descriptiveness of petitioner’s own slogan IF WE DON’T SELL
IT, WE’LL BUY IT has never been pled, and certainly never
tried. Moreover, while petitioner did testify that in the
early 1970’s there were two or three other real estate firms
that used slogans identical to or very similar to his
slogan, the fact remains that for about 20 years, there has
been no evidence of the use by other real estate concerns of
petitioner’s slogan. Accordingly, under the facts of this
case, and in particular the absence of any challenge by
respondent to petitioner’s slogan, we find it inappropriate
to decide whether petitioner’s slogan IF WE DON’T SELL IT,
WE’LL BUT IT was at one time descriptive, and if so, whether
Cancellation No. 23,341
10
said slogan has now acquired a secondary meaning as the
result of petitioner’s continuous use of it for over 25
years.
Decision: The petitions for cancellation are sustained
solely on the ground of priority of use and likelihood of
confusion (Section 2(d) of the Lanham Trademark Act).
E. J. Seeherman
E. W. Hanak
T. J. Quinn
Administrative Trademark
Judges, Trademark Trial
and Appeal