Real Estate USA, Inc.

Trademark Trial and Appeal Board

Jul 24, 2006

No. 78408332 (T.T.A.B. Jul. 24, 2006)

Mailed:
July 24, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Real Estate USA, Inc.
________

Serial No. 78408332
_______

James R. Uhlir of Christensen O’Connor Johnson Kindness
PLLC for Real Estate USA, Inc.

Woodrow N. Hartzog, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).1
_______

Before Seeherman, Quinn and Cataldo, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Real Estate USA, Inc. has appealed from the final
refusal of the Trademark Examining Attorney to register the
mark shown below for “real estate agency services.”2

1 This Examining Attorney did not examine the application. It
appears that the application was assigned to him at the point
that the appeal brief was to be prepared.
2 Application Serial No. 78408332, filed April 26, 2004 and
asserting first use and first use in commerce as early as
October 17, 2003.
THIS DISPOSITION IS NOT CITABLE
AS PRECEDENT OF THE TTAB
Ser No. 78408332
2
Applicant has disclaimed the words REAL ESTATE USA.
Applicant has described its mark as follows:
The mark consists of Applicant’s mark
comprises [sic] the outline of a house
with a five-pointed star cut out of its
middle portion. The five-pointed star
cutout is then disposed below the house
between the letters RE and USA.
Curving banners reminiscent of the
stripes of the Untied States flag
extend outwardly from the house to the
right and finally, the disclaimed words
REAL ESTATE USA are positioned below
the entire design.3

3 Applicant filed a request for reconsideration which included
the proposed description set forth above, as well as a substitute
drawing in order to comply with the Examining Attorney’s
requirement for a drawing showing a clear rendering of the mark.
Although the file does not reveal an Office action addressing the
request for reconsideration, Office records show that the
substitute drawing and the amended description of the mark have
been entered. Further, the Examining Attorney did not address
either the description of the mark or the drawing in his brief.
Accordingly, it appears that, although a formal Office action was
not issued, the Examining Attorney accepted these amendments and
maintained the refusal of registration based on Section 2(d) of
the Act.
Ser No. 78408332
3
Registration has been refused pursuant to Section 2(d)
of the Trademark Act, 15 U.S.C. 1052(d), on the ground that
applicant’s mark so resembles the mark shown below, with
the words REAL ESTATE and USA disclaimed, previously
registered for “real estate agencies,”4 that, as used in
connection with applicant’s identified services, it is
likely to cause confusion or mistake or to deceive. The
registration includes the following description of the
mark:
A half star with “USA” next to it and a
stripe above the star with real estate
[sic, should be “Real Estate”] above
the stripe.

The appeal has been fully briefed. Applicant did not
request an oral hearing.
We reverse the refusal of registration.
Before turning to the substantive ground for refusal,
we note that the Examining Attorney has objected to the

4 Registration No. 2569116, issued May 15, 2002.

Ser No. 78408332
4
three exhibits submitted by applicant with its appeal
brief. Exhibit 2 consists of listings of marks taken from
the USPTO TESS database, and Exhibit 3 consists of a search
summary retrieved by the Google search engine. We agree
with the Examining Attorney that these exhibits are
manifestly untimely, and they have not been considered.
See Trademark Rule 2.142(d) (the record in the application
should be complete prior to the filing of an appeal).
Exhibit A, however, consists of the complete listing for
“RE” taken from the website Acronym Finder
(www.acronymfinder.com). The Examining Attorney had,
during the course of examination, submitted one page from
this source which listed 20 possible meanings of “RE.”
Applicant has submitted, as Exhibit A, all of the meanings
(58) provided by this same source for the two letters.
While, as noted, Trademark Rule 2.142(d) normally precludes
the introduction of additional evidence with an appeal
brief, here the Examining Attorney had previously made an
excerpt of listings for “RE” of record. As the Court
stated in In re Bed & Breakfast Registry, 791 F.2d 157, 229
USPQ 818, 820 (Fed. Cir. 1986), in which the Examining
Attorney had submitted excerpts of newspaper articles
during examination, and the applicant sought to submit
additional excerpts from the same articles with its brief,
Ser No. 78408332
5
“By citing only a portion of an article, that portion is
not thereby insulated from the context from whence it
came.” Accordingly, Exhibit A has been considered.
This brings us to the substantive issue on appeal:
whether applicant’s use of its applied-for mark for real
estate agency services is likely to cause confusion with
the cited mark for real estate agencies. Our determination
of this issue is based on an analysis of all of the
probative facts in evidence that are relevant to the
factors set forth in In re E. I. du Pont de Nemours & Co.,
476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the goods
and/or services. See Federated Foods, Inc. v. Fort Howard
Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See
also, In re Dixie Restaurants Inc., 105 F.3d 1405, 41
USPQ2d 1531 (Fed. Cir. 1997).
There is no dispute that applicant’s and the
registrant’s identified services are legally identical.
Both applicant and the Examining Attorney have directed
their arguments largely to whether the marks are similar or
dissimilar. The Examining Attorney, in asserting that the
Ser No. 78408332
6
marks are sufficiently similar such that confusion is
likely, has correctly set forth a number of legal
principles:
When marks would appear on virtually
identical goods or services, the degree
of similarity necessary to support a
conclusion of likely confusion
declines. Century 21 Real Estate Corp.
v. Century Life of America, 970 F.2d
874, 23 USPQ2d 1698, 1700 (Fed. Cir.
1992).

In articulating reasons for reaching a
conclusion on the issue of likelihood
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, provided
the ultimate conclusion rests on a
consideration of the marks in their
entireties. In re National Data Corp.,
753 F.2d 1056, 224 USPQ 749, 751 (Fed.
Cir. 1985).

If a mark comprises both a word and a
design, then the word is normally
accorded greater weight because it
would be used by purchasers to request
the goods or services. In re Appetito
Provisions Co., 3 USPQ2d 1553 (TTAB
1987).

In determining whether marks are
similar, the focus is on the
recollection of the average purchaser,
who normally retains a general rather
than a specific impression of
trademarks. Chemetron Corp. v. Morris
Coupling & Clamp Co., 203 USPQ 537
(TTAB 1979).

It is in the application of these principles to the
present situation that we take issue with the Examining
Ser No. 78408332
7
Attorney’s position. The Examining Attorney asserts that
“applicant has incorporated the entirety of the literal
portion of the registrant’s mark, “REAL ESTATE USA,” into
its own mark, rendering it confusingly similar to the
registered mark.” Brief, p. 4. Thus, the basis of the
Examining Attorney’s conclusion that the marks are
confusingly similar is that both contain the words REAL
ESTATE USA, even though these words are descriptive and
exclusive rights to use them were disclaimed by both
applicant and the registrant.
The Examining Attorney has asserted that the dominant
element of the registered mark is REAL ESTATE USA, despite
recognizing that these words have been disclaimed and also
recognizing that disclaimed matter is normally less
significant or less dominant. The Examining Attorney also
asserts that the additional elements in applicant’s mark,
the design feature and the REUSA, are not sufficient to
distinguish applicant’s mark from the registrant’s.
The primary difficulty we have with the Examining
Attorney’s position is that it gives too much weight to the
presence in applicant’s mark of the words REAL ESTATE USA.
As the Examining Attorney recognized in requiring applicant
to disclaim exclusive rights to these words, “it merely
describes the nature of the services provided, namely real
Ser No. 78408332
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estate agency services provided in the United States of
America. The wording USA is merely geographically
descriptive of the location of where the applicant’s
services are provided.” Office action mailed November 24,
2004. Because these words are descriptive, consumers will
look to other elements in applicant’s mark to indicate the
source of the services. And the other elements are
prominently displayed. The mark includes a design element
showing a house on curved striped lines reminiscent of a
flag, and the letters REUSA, in which a star design is
superimposed on the letters to visually separate RE from
USA. The star design on these letters also appears to have
been removed from the house design. The design element of
the mark and the REUSA portion are each shown in larger
size than the words REAL ESTATE USA, and the commercial
impression is that REAL ESTATE USA is merely a descriptive
term, indicating the services offered under the REUSA and
House/Banner design mark. It is the latter elements that
are the dominant portion of the mark.
In the cited mark, the words REAL ESTATE are the only
literal portions. However, these words are clearly
descriptive, and they have been disclaimed. We cannot
consider, as used in this mark, that the words REAL ESTATE
USA are the dominant portion of the mark. Rather, they
Ser No. 78408332
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must be viewed as helping to create the overall appearance
of the mark, with both the words and the design element
having weight. Visually, applicant’s mark differs
significantly from the registered mark. In the cited mark,
the words REAL ESTATE are shown separately from USA, on a
different line separated by an actual line design, and with
REAL ESTATE appearing in both capital and lower case
letters, while USA is in all capital letters. While there
is a partial star design in the registered mark, this half
star has a very different look from the complete and
“moved” star in applicant’s mark. No one viewing the two
marks would consider applicant to have simply appropriated
the registered mark and added matter to it. On the
contrary, visually they appear as two separate marks, and
they convey very different commercial impressions.
Phonetically, obviously the cited mark will be
pronounced as “Real Estate USA,” and to the extent that the
words “Real Estate USA” in applicant’s mark will be
pronounced, the phrase will be pronounced identically. But
applicant’s mark also has the letters REUSA, and whether
they are pronounced as “R-E-U-S-A” or run together as “RE-
U-SA,” these letters result in the marks being pronounced
differently. Further, because as used in applicant’s mark
the words REAL ESTATE USA are used in a descriptive manner,
Ser No. 78408332
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and REUSA is shown much more prominently, it is likely that
the REUSA portion will be articulated when referring to
applicant’s mark, while the descriptive phrase REAL ESTATE
USA may not be said at all. More importantly, applicant
has explained that it is the visual aspect of the marks
that are likely to have more importance in the sale of real
estate, where the marks are seen on “For Sale” signs in
front of properties. Thus, any similarity in pronunciation
takes on less significance in our consideration of the
similarities of the marks.
We agree with the Examining Attorney that the
connotation of the marks are similar to the extent that
both refer to REAL ESTATE USA, and the curved stripes and
the star design in applicant’s mark, and the half star in
the cited mark, suggest symbols of the United States flag.
However, we do not agree that REUSA in applicant’s mark
would necessarily be seen as an abbreviation for “Real
Estate USA.” We acknowledge that the Acronym Finder lists
RE as an abbreviation for “REAL ESTATE” but, as the letters
appear in applicant’s mark, we think that consumers are not
likely to immediately recognize REUSA as being the same as
“Real Estate USA.” Hence, we do not think that the marks
convey the same meaning. Moreover, even if the marks were
considered to be the same on the connotation aspect of the
Ser No. 78408332
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“sight, sound, meaning trilogy,” similarity of connotation
alone is generally not a sufficient basis on which to find
likelihood of confusion when the meaning is highly
suggestive or descriptive. See In re Haddock, 181 USPQ
796(TTAB 1974) and cases cited therein. Thus, even if we
were to find that applicant’s mark, in its entirety, meant
REAL ESTATE USA, the similarity in connotation of this
descriptive term does not compel a finding that the marks
are confusingly similar.
The Examining Attorney has argued that, even if the
registered mark is considered a “weak” mark, “such marks
are still entitled to protection against registration by a
subsequent user of the same or similar marks for the same
or closely related goods or services.” Brief, p. 6.
However, the question is whether applicant’s mark is
sufficiently similar. The degree of protection to be
accorded the registered mark is circumscribed by its
weakness. Therefore, since the registered mark consists of
descriptive wording that is displayed in a particular
manner, another mark would have to be virtually identical
not only in the words but in their display to fall within
the registration’s scope of protection. Here, the only
element that is the same in applicant’s mark is the phrase
REAL ESTATE USA. These words, as stated above, are merely
Ser No. 78408332
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descriptive and were disclaimed by the registrant. To
treat applicant’s mark as “the same or similar” to the
registered mark merely on the basis of these words would to
give the cited registration a much greater scope of
protection than it is entitled to have.
We also take issue with the Examining Attorney’s
reliance on those cases which found that “the mere addition
of a term to a registered mark does not obviate the
similarity between the marks nor does it overcome a
likelihood of confusion under Section 2(d).” Brief, p. 6.
Applicant has not merely added a term to the registrant’s
mark; rather, it has simply used a descriptive phrase in
its mark that is also present in the registrant’s mark.
Registrant’s mark is not REAL ESTATE USA per se; it is REAL
ESTATE USA used as part of a design mark. In fact, the
design portion of the registrant’s mark and the manner in
which the words are displayed must be considered a
significant part of the mark, since the disclaimer of REAL
ESTATE USA indicates that if the registrant had sought to
register simply the words alone, such an application would
have been rejected.
Moreover, there are exceptions to the principle which
the Examining Attorney has set forth. An addition of a
term to another’s mark may avoid confusion if the marks
Ser No. 78408332
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have different meanings or convey different commercial
impressions. See, for example, Colgate-Palmolive Company
v. Carter-Wallace, Inc., 167 USPQ 529 (CCPA 1970)(PEAK
PERIOD for personal deodorants not likely to cause
confusion with PEAK for dentifrice); Lever Brothers Company
v. The Barcolene Company, 463 F.2d 1107, 174 USPQ 392 (CCPA
1972 (ALL CLEAR for household cleaner not likely to cause
confusion with ALL for same goods).
Secondly, the addition of a term may avoid confusion
if the initial mark is highly suggestive. For example,
although it is a general rule that the addition of a trade
name or house mark to one of two otherwise confusingly
similar marks will not serve to avoid a likelihood of
confusion between them, there is an exception when the
"product mark" of an applicant is in fact merely
descriptive of the applicant's goods or services and as
such would not be regarded by those who are in the market
for such goods or services as an indication of the source
thereof. In re C. F. Hathaway Company, 190 USPQ 343 (TTAB
1976). Here, of course, there is no question that the term
in the registered mark that is also used by applicant is
merely descriptive; in addition, the manner in which it is
used in applicant’s mark is as a descriptive term for
Ser No. 78408332
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applicant’s services, and consumers would therefore not
regard it as an indication of the source of those services.
Although applicant and the Examining Attorney have
confined their arguments to the du Pont factors of
similarity/dissimilarity of the marks and the services, we
also think one additional factor is applicable, namely, the
conditions of purchase. While the consumers of real estate
agency services are the general public, they are purchasers
or sellers of homes. Because homes are a major investment
for most people, the decision to choose a real estate agent
is not likely to be made without care. Because of the
clearly descriptive significance of the words REAL ESTATE
USA, consumers are not likely to assume that all marks that
contain these words would indicate a single source for the
services or, put another way, simply because these words
are found in two marks, consumers will not believe that the
marks represent a common source on this basis alone.
Decision: The refusal of registration is reversed.