Realum KG

Trademark Trial and Appeal Board

Jul 15, 2005

No. 78376508 (T.T.A.B. Jul. 15, 2005)

Mailed: 7/15/2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Realum KG
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Serial No. 78376508
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Michael Schefczyk for applicant.

Catherine Pace Cain, Trademark Examining Attorney, Law
Office 113 (Odette Bonnet, Managing Attorney).
_______

Before Quinn, Hohein and Walsh, Administrative Trademark
Judges.

Opinion by Quinn, Administrative Trademark Judge:

An application was filed by Realum KG to register the
mark REALUM (in standard character form) for “financial
investment in the field of real estate; [and] leasing of
real estate” in International Class 36; and “real estate
development” in International Class 37.1
The trademark examining attorney refused registration
under Section 2(d) of the Trademark Act on the ground that
applicant’s mark, as applied to applicant’s services, so

1 Application Serial No. 78376508, filed March 1, 2004, based on
German Registration No. 30173503, issued April 9, 2002.
THIS DECISION IS NOT
CITABLE AS PRECEDENT
OF THE TTAB
Ser No. 78376508
2
resembles the previously registered mark REALEUM for a
variety of goods and services related to real estate, as to
be likely to cause confusion. The goods and services are
identified as follows:
Printed materials, namely, manuals and
books for use in operating, managing,
insuring, brokering, maintaining,
leasing, buying, selling, researching,
developing, planning, investing,
financing, marketing, and organizing of
real estate; [and] printed materials,
namely, manuals and books for use in
real estate educational services, in
consultation services and in accounting
services (in International Class 16);
and

Educational services, namely,
conducting classes, seminars,
conferences and workshops in the field
of real estate (in International Class
41)2

Computer programs for use in financial
and real estate data management;
computer programs for use in the
prospecting of tenants, analyzing and
processing of tenant applications,
renewals and transfers of tenants, sale
of tenant services, monitoring of
billables, receivables, and revenue at
the property and portfolio levels, and
in the leasing, researching, and
marketing of real estate; computer
programs for use in training of real
estate property managers in the
prospecting of tenants, analyzing and
processing of tenant applications,
renewals and transfers of tenants, sale
of tenant services, monitoring of
billables, receivables, and revenue at

2 Registration No. 2725144, issued June 10, 2003.
Ser No. 78376508
3
the property and portfolio levels, and
in the leasing, researching, and
marketing of real estate; computer
software, namely, communications
software for connecting computer users
to a database and performing real
estate and business transactions via a
global computer network; computer
software for providing decision
support, information reporting,
analysis of key performance trends and
balanced scorecards in the field of
real estate business; [and] computer
programs for processing product and
service transactions in financial and
real estate fields (in International
Class 9); and

Computerized and on-line data
management services for real estate
businesses; [and] providing business
consulting services to real estate
businesses (in International Class 35).3

Both registrations are owned by the same entity.
When the refusals were made final, applicant appealed.
Applicant and the examining attorney filed briefs. An oral
hearing was not requested.
Applicant argues that it owns a family of marks, and
that the present mark “is an artificial term composed of a
reference to the activity, i.e., real estate in this case,
and the Latin ending “-um.” (Brief, p. 1). Although
applicant states that it “cannot refute the verbal
similarity between the marks REALUM and REALEUM,” applicant

3 Registration No. 2846297, issued May 25, 2004.
Ser No. 78376508
4
contends that the services rendered under the marks are
different and would not be encountered by the same
purchasers. Id. Applicant urges that the mere fact that
both marks are used in the real estate field is not a
sufficient basis upon which to find a likelihood of
confusion.
The examining attorney maintains that the marks are
highly similar. With respect to the goods and/or services,
the examining attorney maintains that they are related
inasmuch as all relate to the fields of finance and real
estate. The examining attorney contends that registrant’s
computer programs, books and manuals could be used in
connection with the type of financial and real estate
services offered by applicant, and that registrant’s
educational services could be provided to consumers of
applicant’s services inasmuch as financial consultants and
real estate agents often conduct seminars and workshops in
their fields. In support of her position regarding the
relatedness of the goods and/or services, the examining
attorney submitted copies of use-based third-party
registrations in an attempt to show that the type of goods
and services involved herein may emanate from a common
source under the same mark.
Ser No. 78376508
5
Our determination of the issue of likelihood of
confusion 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).
We first turn to consider the similarities and the
dissimilarities between the marks. In this case, we
compare applicant’s mark REALUM with registrant’s mark
REALEUM, both in standard character form. The terms
themselves are strikingly similar. The only difference
between the marks is the presence of the fifth letter “E”
in the middle of registrant’s mark. Many consumers would
likely not notice or remember the slight difference in the
middle of registrant’s mark. Certainly, whether the marks
can be distinguished in a side-by-side comparison is not
the test. Grandpa Pigeon’s of Missouri, Inc. v.
Ser No. 78376508
6
Borgsmiller, 477 F.2d 586, 177 USPQ 573, 574 (CCPA 1973).
Regarding the pronunciation of the marks, although very
slightly different, it is likely that purchasers would
pronounce the marks very similarly. Even if they were
pronounced differently, the differences between REALUM and
REALEUM would be slight.
As to the meaning of the marks, it is likely that
purchasers would perceive both marks as being suggestive
when used in connection with real estate goods and
services. Finally, we find that the commercial impressions
engendered by the marks REALUM and REALEUM would be very
similar, if not virtually identical. The marks look and
sound similar, and their meanings are identical.
Therefore, this factor favors a finding of likelihood of
confusion.
In finding that the marks are confusingly similar, we
have kept in mind that consumers, due to the normal
fallibility of human memory over time, retain a general
rather than a specific impression of trademarks encountered
in the marketplace. In re Research and Trading Corp., 793
F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986).
We find it likely that consumers would believe, in
view of the similarities in sound, appearance, meaning and
overall commercial impression between REALUM and REALEUM,
Ser No. 78376508
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that the respective goods and/or services have a common
source if such goods and/or services were related.
We thus turn to the du Pont factor regarding the
similarity or dissimilarity of the involved goods and/or
services. In comparing the goods and/or services, it is
not necessary that they be identical or even competitive in
nature in order to support a finding of likelihood of
confusion. It is sufficient that the circumstances
surrounding their marketing are such that they would be
likely to be encountered by the same persons under
circumstances that would give rise, because of the marks
used in connection therewith, to the mistaken belief that
the goods and/or services originate from or are in some way
associated with the same source. In re International
Telephone and Telegraph Corp., 197 USPQ 910 (TTAB 1978).
The issue of likelihood of confusion must be determined on
the basis of the goods and/or services as set forth in the
application and the cited registration(s). In re Shell Oil
Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir.
1993); and Canadian Imperial Bank of Commerce, N.A. v.
Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815-16
(Fed. Cir. 1987).
Applicant is rendering financial real estate
investment services, real estate leasing services and real
Ser No. 78376508
8
estate development services. Registrant is offering, in
relevant part, manuals and books for use in leasing,
buying, selling, developing, investing and financing of
real estate; and computer programs for a variety of uses in
the field of financial and real estate, including data
management; leasing, researching and marketing of real
estate; monitoring revenue at the property and portfolio
levels; providing decision support, information reporting
and analysis of key performance trends in the field of real
estate business; and processing product and service
transactions in financial and real estate fields.
Registrant also offers classes, seminars, conferences and
workshops in the field of real estate, as well as business
consultation services to real estate businesses.
Applicant’s services and registrant’s goods and
services involve real estate and, in point of fact, some of
registrant’s goods and services specifically involve real
estate leasing, investment and development, that is, the
very services rendered by applicant. The goods and
services would move in the same or similar real estate and
financial trade channels and would be purchased by the same
classes of purchasers. Anyone looking to invest, lease or
develop real estate is a prospective consumer for both
Ser No. 78376508
9
applicant’s services and the goods and services of
registrant.
The examining attorney has made of record several use-
based third-party registrations in an attempt to show that
goods of the type identified in the application and that
goods and services in the cited registration may be sold
under a single mark by a single source. Third-party
registrations which individually cover a number of
different items and which are based on use in commerce are
probative to the extent that they suggest that the listed
goods and/or services are of a type which may emanate from
a single source. In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993). Here, the registrations show
adoption of the same mark by the same entity for, inter
alia, various real estate services, such as leasing and
investing, as well as for educational seminars and
conferences regarding real estate.
A determination of the issue of likelihood of
confusion between the applied-for mark and the registered
mark must be made on the basis of the identifications of
goods and services as they are identified in the involved
application and registration. The involved identifications
of goods and services do not include any limitations as to
classes of purchasers and we must presume, therefore, that
Ser No. 78376508
10
the identifications encompass all goods and services of the
type described, and that the identified goods and services
move in all channels of trade and to all classes of
purchasers that would be normal for such goods and
services. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981).
Accordingly, we presume that applicant’s and registrant’s
goods and/or services are offered to all types of
consumers, ordinary and sophisticated. To the extent that
some purchasers may be knowledgeable in the fields of real
estate and investments, this does not necessarily mean that
they are immune from source confusion. In re Decombe, 9
USPQ2d 1812 (TTAB 1988).
Further, as pointed out by the examining attorney in
response to applicant, the fact that the goods and services
are classified in different classes is immaterial. The
classification is purely an administrative determination
unrelated to the determination of likelihood of confusion.
Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29 USPQ2d 1771
(Fed. Cir. 1993). See TMEP §1207.01(d)(v)(4th ed. rev.
April 2005).
Lastly, to the extent that any of the points raised by
applicant raise a doubt about likelihood of confusion, that
doubt is required to be resolved in favor of the prior
registrant. In re Hyper Shoppes (Ohio), Inc., supra; and
Ser No. 78376508
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In re Martin’s Famous Pastry Shoppe, Inc., 748 F.2d 1565,
223 USPQ 1289 (Fed. Cir. 1984).
Decision: The refusal to register is affirmed.