Peter Lik IP Company, LLC

Trademark Trial and Appeal Board

Sep 13, 2019

87495712 (T.T.A.B. Sep. 13, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: September 13, 2019

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Peter Lik IP Company, LLC
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Serial Nos. 87495712, 87495723 and 874957321

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Lauri S. Thompson and Shauna L. Norton of Greenberg Traurig, LLP,
for Peter Lik IP Company, LLC.

Stephanie Rydland, Trademark Examining Attorney, Law Office 117,
Hellen M. Bryan-Johnson, Managing Attorney.
_____

Before Zervas, Wellington and Heasley,
Administrative Trademark Judges.

Opinion by Zervas, Administrative Trademark Judge:
On June 19, 2017, Peter Lik IP Company, LLC (“Applicant”) filed three
applications for registration on the Principal Register of the mark PETER LIK AURA
HOMES in standard characters under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b). The three applications recite the following services:

1 The Board consolidated the appeals for these three applications orders dated February 2,
2019 and March 12, 2019. 10 TTABVUE and 13 TTABVUE. Citations are to the record in
application Serial No. 87495712 unless otherwise noted.
Serial Nos. 87495712, 87495723 and 87495732
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• Application Serial No. 87495712 - “Real estate listings,
leasing and brokerage services, provided solely in relation
to properties developed according to the artistic and design
direction of the artist Peter Lik” in International Class 36;
• Application Serial No. 87495723 - “Land development
and construction services, namely, planning, development
and construction of residential communities, and
commercial projects, such services provided according to
the artistic and design direction of the artist Peter Lik;
custom construction of homes, such services provided
according to the artistic and design direction of the artist
Peter Lik” in International Class 37; and
• Application Serial No. 87495732 - “Design of specialty
interior and exterior environment settings; interior design;
Providing a website featuring information in the field of
interior design and architecture; Planning and layout
design services for residential homes and office space;
consulting in the fields of interior design and architecture;
architectural design in the field of single family homes; all
of the foregoing services provided according to the artistic
and design direction of the artist Peter Lik” in
International Class 42.
Each application contains a disclaimer of the term “HOMES, and a statement of
consent from Peter Lik to the registration of his name.
In each application, the Examining Attorney refused registration of Applicant’s
mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting a
likelihood of confusion in view of Registration No. 4481972 for the mark AURA in
standard characters (registered February 11, 2014) for “leasing and management of
multi-family housing units” in International Class 36 and “development and
construction of multi-family housing units” in International Class 37.
After the Examining Attorney issued a Final Office Action in each application,
Applicant appealed and filed a request for reconsideration. Each request for
Serial Nos. 87495712, 87495723 and 87495732
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reconsideration was denied, and Applicant and the Examining Attorney filed briefs.
We affirm each refusal to register.
I. Likelihood of Confusion
Our determination under Section 2(d) of the Trademark Act is based on an
analysis of the probative facts in evidence that are relevant to the factors bearing on
a likelihood of confusion. See In re E.I. DuPont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973) (“DuPont”); see also Palm Bay Imps., Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005);
In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
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 consider each DuPont factor for which there is evidence and
argument. See, e.g., In re Guild Mortgage Co., 912 F.3d 1376, 129 USPQ2d 1160,
1162-63 (Fed. Cir. 2019).
A. Similarity or dissimilarity of services, channels of trade and
classes of consumers
We compare the respective services as they are identified in the applications and
registration at issue. See Stone Lion Capital Partners, LP v. Lion Capital LLP, 746
F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston
Computers Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). See
Serial Nos. 87495712, 87495723 and 87495732
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also, Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001
(Fed. Cir. 2002). Likelihood of confusion “must be resolved on the basis of the goods
[or services] named in the registration and, in the absence of specific limitations in
the registration, on the basis of all normal and usual channels of trade and methods
of distribution.” SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed.
Cir. 1983).
In addition, it is sufficient for a refusal based on likelihood of confusion that
relatedness is established for any item encompassed by the recitation of services in a
particular class. Tuxedo Monopoly, Inc. v. General Mills Fun Grp., 648 F.2d 1335, 209
USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 116 USPQ2d 1406, 1409 (TTAB
2015), aff’d, 866 F.3d 1315, 123 USPQ2d 1744 (Fed. Cir. 2017).
Application Serial No. 87495712
We compare Applicant’s “real estate listings, leasing and brokerage services,
provided solely in relation to properties developed according to the artistic and design
direction of the artist Peter Lik” with Registrant’s “leasing and management of multi-
family housing units.” The services are legally identical in part because real estate
leasing is the same service as leasing multi-family housing units. The limitation
regarding the involvement of Mr. Lik does not, in any meaningful way, alter the
nature of the services identified; nor does it represent that the services will be
marketed in any particular, limited way, through any particular, limited trade
channels, or to any particular class of customers.
Serial Nos. 87495712, 87495723 and 87495732
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Because the services described in the application and the cited registration are in
part identical, we presume that the channels of trade and classes of purchasers are
the same. See In re Viterra Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir.
2012) (legally identical goods are presumed to travel in same channels of trade to
same class of purchasers); Genesco Inc. v. Martz, 66 USPQ2d 1260, 1268 (TTAB 2003)
(“Given the in-part identical and in-part related nature of the parties’ goods, and the
lack of any restrictions in the identifications thereof as to trade channels and
purchasers, these clothing items could be offered and sold to the same classes of
purchasers through the same channels of trade.”); In re Smith and Mehaffey, 31
USPQ2d 1531, 1532 (TTAB 1994) (“Because the goods are legally identical, they must
be presumed to travel in the same channels of trade, and be sold to the same class of
purchasers.”).
Application Serial No. 87495723
We compare Applicant’s “land development and construction services, namely,
planning, development and construction of residential communities, and commercial
projects, such services provided according to the artistic and design direction of the
artist Peter Lik; custom construction of homes, such services provided according to
the artistic and design direction of the artist Peter Lik” with Registrant’s
“development and construction of multi-family housing units.” The land development
and construction services in each identification are legally identical because
residential communities are multi-family housing units on a large scale. We also
presume the trade channels and classes of consumers to be identical due to the legal
Serial Nos. 87495712, 87495723 and 87495732
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identity of the services. In re Viterra Inc., 101 USPQ2d at 1908. For the same reasons
mentioned above in connection with the discussion of application Serial No.
87495712, the reference in the recitation of services to Mr. Lik does not alter the
nature of the services or the trade channels and classes of consumers.
Application Serial No. 87495732
We compare Applicant’s “design of specialty interior and exterior environment
settings; interior design; providing a website featuring information in the field of
interior design and architecture; planning and layout design services for residential
homes and office space; consulting in the fields of interior design and architecture;
architectural design in the field of single family homes; all of the foregoing services
provided according to the artistic and design direction of the artist Peter Lik” with
Registrant’s “leasing and management of multi-family housing units” and
“development and construction of multi-family housing units.” Services need not “be
identical or even competitive in order to support a finding of likelihood of confusion.
Rather, it is enough that … services are related in some manner or that
circumstances surrounding their marketing are such that they would be likely to be
seen by the same persons under circumstances which could give rise, because of the
marks used thereon, to a mistaken belief that they originate from or are in some way
associated with the same producer or that there is an association between the
producers of each parties’ … services.” In re Melville Corp., 18 USPQ2d 1386, 1388
(TTAB 1991). See also Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356,
Serial Nos. 87495712, 87495723 and 87495732
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101 USPQ2d 1713, 1722 (Fed. Cir. 2012); Time Warner Entm’t Co. v. Jones, 65
USPQ2d 1650, 1661 (TTAB 2002).
The evidence of relatedness of the services includes webpages featuring design,
architectural, planning, development and construction services of the type identified
in the application and registration,2 including:3
● colliers.com
Offering architectural services and including a link to real
estate management services as “Core Services”;4

● blumentals.com
Identifying a “full-service architectural design firm”
offering, inter alia, zoning approvals and assistance,
building permitting coordination, master planning and
programming and feasibility and cost studies, integral to
the development of multi-family housing units;5

● stellar.net
Offering architectural services, design services and
construction services;6

● k4architecture.com
Offering interior design, architectural design and
construction services;7

2 Although the evidence does not specifically identify architectural services involving single
family homes, it provides for architectural services and single family homes are not excluded
from such services.
3 The sv-constructions.com webpage has no probative value because it lists a foreign contact
telephone number and states “Indians by nature love their family life with a desire that each
member of the family has a comfortable existence at home.” Sept. 18, 2017 Office Action,
TSDR 4-5. We find that the webpage is not directed to consumers in the United States.
Citations to the examination record refer to the Trademark Office’s online Trademark
Status and Document Retrieval system (TSDR), by page number.
4 Sept. 18, 2017 Office Action, application Serial No. 87495732, TSDR 6-7.
5 Id. at 8.
6 Id. at 9-10.
7 April 10, 2018 Office Action, application Serial No. 87495732, TSDR 3.
Serial Nos. 87495712, 87495723 and 87495732
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● chesterinc.com
“Architectural and Construction Services;”8 and

● masbuild.com
Offering “specific design or construction services as well as
turn-key interior design and design-build solutions” and
“bring[ing] to each project a wide range of expertise in
government, education, multifamily housing ….”9

This evidence demonstrates that the services identified in the application and the
registration may be marketed under the same mark, that consumers would presume
a relationship between such services, and that Applicant’s and Registrant’s services
are related for likelihood of confusion purposes. See, e.g., In re Davey Prods. Pty Ltd.,
92 USPQ2d 1198, 1202-04 (TTAB 2009); In re Toshiba Med. Sys. Corp., 91 USPQ2d
1266, 1268-69, 1271-72 (TTAB 2009).
In addition, Registrant’s services identified as “development and construction of
multi-family housing units” incorporates certain services identified in Applicant’s
recitation of services, even if provided according to the artistic and design direction
of Mr. Lik. Specifically, the development and construction of multifamily homes may
involve the design of specialty interior and exterior environment settings; interior
design; and planning and layout design services for residential homes (including
multifamily homes). Consumers of Registrant’s services will obtain several of
Applicant’s services as key components of Registrant’s services. The classes of
purchasers and trade channels for such services are hence overlapping, and the
reference in the recitation of services to Mr. Lik does not alter the nature of the

8 Id. at 4.
9 Id. at 6.
Serial Nos. 87495712, 87495723 and 87495732
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services or the trade channels and classes of consumers for the reasons mentioned
above.
For the foregoing reasons, we find the DuPont factors regarding the similarity of
the services, trade channels and purchasers weigh in favor of finding a likelihood of
confusion in each application.
B. Similarity or Dissimilarity of the Marks
We now compare Applicant’s and the cited Registrant’s marks for similarities and
dissimilarities in appearance, sound, connotation and commercial impression. Palm
Bay Imports, 73 USPQ2d at 1692. The test is not whether the marks can be
distinguished when subjected to a side-by-side comparison, but rather whether the
marks are sufficiently similar in terms of their overall commercial impression that
confusion as to the source of the services offered under the respective marks is likely
to result. Coach Servs., 101 USPQ2d at 1721. Under actual marketing conditions,
consumers do not necessarily have the luxury of making side-by-side comparisons
between marks, and must rely upon their imperfect recollections. Dassler KG v. Roller
Derby Skate Corp., 206 USPQ 255, 259 (TTAB 1980). The focus is on the recollection
of the average purchaser, who normally retains a general rather than a specific
impression of trademarks. In re Assoc. of the United States Army, 85 USPQ2d 1264,
1268 (TTAB 2007); Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
Where the services of an applicant and registrant are legally identical, or even
“similar in kind and/or closely related,” as they are in this consolidated appeal, the
degree of similarity between the marks required to support a finding of likelihood of
Serial Nos. 87495712, 87495723 and 87495732
- 10 -
confusion is not as great as in the case of diverse services. In re J.M. Originals Inc.,
6 USPQ2d 1393, 1394 (TTAB 1987).
Although we must consider the mark as a whole, “in articulating reasons for
reaching a conclusion on the issue of confusion, there is nothing improper in stating
that, for rational reasons, more or less weight has been given to a particular feature
of a mark … .” In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985).
It is immediately apparent that Applicant has incorporated the entirety of
Registrant’s standard character AURA mark into its standard character mark.
Likelihood of confusion is often found where the entirety of one mark is incorporated
within the other. In re Denisi, 225 USPQ 624, 626 (TTAB 1985) (PERRY’S PIZZA for
restaurant services specializing in pizza and PERRY’S for restaurant and bar
services); Johnson Publ’g Co. v. Int’l Dev. Ltd., 221 USPQ 155, 156 (TTAB 1982)
(EBONY for cosmetics and EBONY DRUM for hairdressing and conditioner); In re
South Bend Toy Mfg. Co., 218 USPQ 479, 480 (TTAB 1983) (LIL’ LADY BUGGY for
toy doll carriages and LITTLE LADY for doll clothing).
Applicant argues that the term PETER LIK distinguishes the mark because Peter
Lik is a world-famous landscape photographer; he owns many registrations (which
are of record); consumers will immediately associate the name PETER LIK with
Applicant; and PETER LIK is the dominant portion of Applicant’s mark.10

10 7 TTABVUE 6.
Serial Nos. 87495712, 87495723 and 87495732
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There is no per se rule as to how the addition of a house mark or designer name
to similar product marks affects the analysis of whether marks are similar or
dissimilar.11 In analyzing the similarity or dissimilarity involving house marks or
designer names, we must consider the marks in their entireties, including the
presence of the house mark or designer name. See In re Fiesta Palms LLC, 85
USPQ2d 1360, 1364 (TTAB 2007).
The Board has described the different effects the addition of a house mark or
designer name to a registered mark can have in a likelihood of confusion case:
[S]uch addition may actually be an aggravation of the
likelihood of confusion as opposed to an aid in
distinguishing the marks so as to avoid source confusion.
On the other hand, where there are some recognizable
differences in the asserted conflicting product marks or the
product marks in question are highly suggestive or merely
descriptive or play upon commonly used or registered
terms, the addition of a housemark and/or other material
to the assertedly conflicting product mark has been
determined sufficient to render the marks as a whole
sufficiently distinguishable.
In re Christian Dior, S.A., 225 USPQ 533, 534 (TTAB 1985) (citations omitted)
(Applicant’s LE CACHET DE DIOR is similar to the registered mark CACHET).
When, as in this case, one mark is encompassed within the other mark, purchasers
familiar with Registrant’s mark are likely to assume that the house mark or designer
name simply identifies what had previously been an anonymous source. In In re Hill-
Behan Lumber Co., 201 USPQ 246 (TTAB 1978), the Board explained that:

11 The record does not establish that Mr. Lik is a famous landscape photographer, as
Applicant maintains in its brief.
Serial Nos. 87495712, 87495723 and 87495732
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Thus, for purposes herein, the “LUMBERJACK” marks of
the parties are identical. In such a situation, the addition
of applicant’s house mark “HILL-BEHAN’S” thereto is not
deemed sufficient to distinguish the marks as a whole and
to avoid confusion in trade. This is especially so when one
considers that a trademark or a service mark identifies an
anonymous source so that the average consumer in the
marketplace is, more often than not, unaware of the
producer of the goods sold under a mark and often doesn’t
care, so long as the quality of the goods identified by the
mark remains the same. Thus, if those individuals familiar
with registrant’s “LUMBERJACK” products were to
encounter “HILL-BEHAN’S LUMBER JACK” stores at
which lumber products are sold, there is nothing to
preclude them from assuming that “HILL-BEHAN” is the
source of the “LUMBERJACK” products and has
established retail outlets to market them. Whether it be
confusion of source or sponsorship, the likelihood of such
confusion is there and, as a consequence, registrant’s
registered mark is a bar to the registration sought by
applicant.
Id. at 249-50; see also In re C.F. Hathaway Co., 190 USPQ 343 (TTAB 1976)
(HATHAWAY GOLF CLASSIC is similar to GOLF CLASSIC).
The common term in the marks, AURA, is defined in the online version of
Merriam-Webster Dictionary as:
1 : a distinctive atmosphere surrounding a given source //
The place had an aura of mystery.
…
3 : an energy field that is held to emanate from a living
being
4 : a luminous radiation : NIMBUS[.]12

12 https://www.merriam-webster.com/dictionary/aura (accessed Sept. 5, 2019). We take
judicial notice of this definition. 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
Serial Nos. 87495712, 87495723 and 87495732
- 13 -
AURA has greater trademark significance in AURA HOMES and is minimally
suggestive of a feature of Applicant’s services. HOMES in Applicant’s mark is a highly
descriptive term which refers to the ultimate product or subject of the construction,
sale, leasing and design services identified in the applications; it has been disclaimed
in each application. Disclaimed matter that is descriptive of or generic for a party’s
goods and services is typically less significant or less dominant when comparing
marks. In re Detroit Athletic Co., 903 F.3d 1297, 128 USPQ2d 1047, 1050 (Fed. Cir.
2018) (citing In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed.
Cir. 1997)). The exceptions noted in In re Christian Dior hence do not apply, and the
addition of the house mark or designer name PETER LIK does not distinguish the
marks sharing the dominant term AURA. We therefore find the marks PETER LIK
AURA HOMES and AURA are similar in appearance, sound, connotation and
commercial impression.
C. Purchaser Sophistication
Applicant argues that the limitation regarding Mr. Lik restricts its services to
“high-end” properties and that its services are provided to sophisticated purchasers
with substantial financial resources; and that Registrant’s consumers are likely to
have substantially less financial resources and are looking to rent a furnished
apartment in a multi-family apartment building.” The reference in the recitation of
services to Mr. Lik does not limit the services to high-end properties offered to

in printed format or regular fixed editions. In re Red Bull GmbH, 78 USPQ2d 1375, 1377
(TTAB 2006).
Serial Nos. 87495712, 87495723 and 87495732
- 14 -
wealthy sophisticated purchasers. In fact, Applicant’s recitation of services is silent
on this point; Mr. Lik may design, develop and lease properties that are not “high-
end” and that are not directed to sophisticated purchasers with economic means.
In addition, Applicant has not offered any evidentiary support for its argument,
and it is not clear why certain services such as the leasing services would require any
sophistication or care. But even if customers for Applicant’s and Registrant’s services
are likely to be more sophisticated than ordinary individuals, such sophisticated and
discriminating purchasers are not necessarily sophisticated or knowledgeable in the
field of trademarks, nor are they immune from confusion as to origin or affiliation.
See, e.g., Wincharger Corp. v. Rinco, Inc., 297 F.2d 261, 132 USPQ 289, 292 (CCPA
1962); In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); In re Pellerin Milnor
Corp., 221 USPQ 558, 560 (TTAB 1983). This would be especially the case where, as
here, substantially similar marks are used by Applicant and Registrant in connection
with legally identical or highly similar services. Stone Lion, 110 USPQ2d at 1163
(“Substantial evidence supports the Board’s finding that such ordinary consumers …
‘are not immune from source confusion where similar marks are used in connection
with related services.’”).
D. Balancing the factors
We have found that Applicant’s marks and the cited mark are similar, the services
are in part legally identical with regard to the services in application Serial Nos.
87495712 and 87495723, and are related to one another with regard to the services
in application Serial No. 87495732, and are provided to overlapping purchasers in
Serial Nos. 87495712, 87495723 and 87495732
- 15 -
overlapping trade channels. The DuPont factor regarding purchaser sophistication is
neutral in our analysis. We therefore find that there is a likelihood of confusion
between Applicant’s and Registrant’s marks for their respective services.
Decision: The refusals to register in application Serial Nos. 87495712, 87495723
and 87495732 are affirmed.