RE/MAX Int’l., Inc.v.Stephen R. Blagden

Trademark Trial and Appeal Board

Nov 8, 2000

No. 91103814 (T.T.A.B. Nov. 8, 2000)

Hearings:1 Paper No. 31
September 2, 1999 BAC
June 22, 2000 11/8/00
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
RE/MAX International, Inc.
v.
Stephen R. Blagden
_____
Opposition No. 103,814
to application Serial No. 74/724,634
filed on September 5, 1995
_____
Susan Somers Neal and Robert W. Zelnick of McDermott,
Will & Emery for RE/MAX International, Inc.
Stephen R. Blagden, pro se.
______
Before Seeherman, Chapman and Rogers, Administrative
Trademark Judges.
Opinion by Chapman, Administrative Trademark Judge:
Stephen R. Blagden has applied to register on the
Principal Register the mark shown below

1 Due to very unusual scheduling problems, there were two oral
hearings held in this case. Both parties were advised of both
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Opposition No. 103814
2
for “advertising services, namely, providing home sellers
a telephone-facsimile forum for listing their homes” in
International Class 35. The application is based on
applicant’s claimed dates of first use and first use in
commerce of July 30, 1995.
As grounds for opposition, opposer alleges that
since at least as early as June 1, 1973 opposer has used
its registered mark RE/MAX (Registration No. 1,139,014)
for “real estate brokerage services” (International Class
36) and for “rendering technical aid and assistance to
others in the establishment and operation of a real
estate brokerage agency” (International Class 35); that
opposer’s affiliates, i.e., RE/MAX franchisees and RE/MAX
sales associates, have also used the mark in connection
with real estate brokerage services since June 1, 1973,
as authorized through franchise agreements and
independent contractor agreements; that opposer has
thousands of affiliates, both in the United States and
throughout the world; that since 1973 opposer and all of
its affiliates (worldwide) have spent substantial sums in
developing, promoting and maintaining the RE/MAX mark;
that as a result of opposer’s extensive use of its mark

hearings, but only applicant attended the first hearing, and
Opposition No. 103814
3
RE/MAX, it is famous; and that applicant’s mark, when
used in connection with his services, so resembles
opposer’s previously used and registered mark, as to be
likely to cause confusion, mistake, or deception.2
In his answer applicant denies the salient
allegations of the notice of opposition.
The record consists of the pleadings; the file of
the opposed application; opposer’s notice of reliance on
a status and title copy of its pleaded Registration No.
1,139,014; and the testimony, with exhibits, taken by
opposer of (i) Mr. Stephen R. Blagden, applicant, (ii)
Mr. Daryl Jesperson, opposer’s president, and (iii) Ms.
Irmina Stroud, one of opposer’s in-house paralegals.
Applicant has submitted no evidence on his own behalf in
this case, and applicant did not attend the depositions
of Mr. Jesperson or Ms. Stroud.
Opposer filed a brief on the case.3 As explained in
footnote 1, applicant attended the oral hearing before
this Board on September 2, 1999, and opposer’s attorney

only opposer’s attorney attended the second hearing.
2 Opposer also pleaded dilution under Section 43(c)(1) of the
Trademark Act. Opposer did not pursue this issue in its brief
on the case. In fact, to the contrary, it is very clear from
opposer’s brief on the case that only the issue of likelihood of
confusion is involved in this proceeding. (See, e.g., opposer’s
brief, pp. 3, 5, 13 and 20.) The issue of dilution will not be
further discussed herein.
Opposition No. 103814
4
attended the oral hearing before this Board on June 22,
2000.
Opposer, RE/MAX International, Inc., is a franchisor
of real estate sales offices, which offer a variety of
real
estate services to the general public. Opposer was
established in January 1973, with its first office
opening in March 1973, and with first use of the mark
RE/MAX in interstate commerce on June 1, 1973.
Worldwide, there are currently about 2,860 operational
offices, with about 46,500 sales agents. Approximately
82% of the sales agents, or 38,000, are in the United
States, and since the early 1980s opposer has had RE/MAX
agents in all 50 states.
Opposer franchises the right to use the mark RE/MAX
to real estate brokerages which, in turn, enter into
contractual relationships with their sales agents to
allow the sales agents to use the RE/MAX name and mark.
These sales agents operate on the “100 percent commission
concept” (Jesperson, dep., p. 9), whereby they receive
100 percent of the commissions earned, but they are
responsible for 100 percent of the expenses, including
advertising.

3 Applicant filed an untimely brief, and opposer’s motion to
Opposition No. 103814
5
Since 1973, the total amount spent on consumer-
directed advertising and promotion of the services
offered under the RE/MAX mark by the sales agents
worldwide is over $1.6 billion. In the last seven years
(through 1996), each agent spent about $5000 per year on
this advertising. (Mr. Jesperson testified about how he
computed the total advertising figures based on separate
agents covering their own advertising expenses, and he
characterized these advertising figures as “very, very
conservative” (dep., p. 12). This advertising is done by
the agents directly to the consumer. In addition,
opposer itself spends about $6 million per year on
“industry-directed” advertising, which is directed to
sales people and brokers. (This includes a large
advertising and promotional effort by opposer to
encourage agents and potential franchisees to become part
of the RE/MAX organization).
Opposer’s RE/MAX real estate brokerage services are
advertised, inter alia, in print media such as national
and local newspapers; broadcast media such as radio and
television commercials; through the Internet; and in
sports stadiums. In addition, opposer sponsors sporting
events such as NASCAR racing; distributes personal

strike same was granted by Board order dated June 9, 1998.
Opposition No. 103814
6
promotion items such as key chains, pens, coffee cups and
calendars; and actively participates in philanthropic
concerns such as the Children’s Miracle Network (for
which it is the second largest fundraiser). Also,
opposer’s RE/MAX mark appears on its fleet of 89 hot-air
balloons, which is the largest in the world. Opposer’s
RE/MAX advertisements are directed to the general public,
including home owners, home sellers, home buyers, real
estate agents, brokers, corporations and potential
franchisees.
Opposer was the first real estate organization to
establish a site on the Internet, and the site currently
has 80,000 property listings. Every page of opposer’s
Internet site includes the RE/MAX mark, and the site
receives thousands of “hits” or visits on a daily basis.
Also since 1973, opposer has used the RE/MAX mark in
connection with over 6 million home sale transactions
(worldwide), which relates to $717.5 billion dollars in
sales. Opposer did not break these figures down to
reflect domestic sales, although Mr. Jesperson, opposer’s
president, stated that “[w]e have presence worldwide, but
these sales are principally in the United States” (dep.,
p. 14).
Opposition No. 103814
7
Applicant, Stephen R. Blagden, located in Arlington,
Massachusetts, commenced use of his mark, RE-FAX, in July
1995, and his services, identified after amendment as
“advertising services, namely, providing home sellers a
telephone-facsimile forum for listing their homes,”4 are
directed primarily to home sellers. However, he also
intends to reach home buyers, or anyone interested in
reaching home sellers or home buyers, such as real estate
agents, mortgage brokers, insurance companies and movers
(Blagden dep., pp. 10-11). When a home seller signs up
for applicant’s services, the following two lines are
added to the seller’s classified advertisement:
Info by fax 24 hrs a day call
800-RE-FAX-ME Indx # xxx
Thereafter, when an interested home buyer sees the
ad, he calls the 800 number, enters the index number of
the house, and enters his own fax number, whereupon the
information on that house is faxed to him. In a brochure
describing the opportunities involved in being a “RE-FAX
representative,” applicant uses the phrase “About RE-Fax

4 In his application as filed, applicant stated the following in
the “goods and/or services” portion of his application:
“Service to help sellers of homes to sell their homes by
providing information available on line 24 hours a day by fax.
Also, to provide realtors the capability to provide listing
information on their own by fax. That is where the name comes
from - Real Estate by fax – RE-fax.”
Opposition No. 103814
8
Real Estate Listing Service” (Blagden dep., exhibit 2).
Applicant testified that his service is one that is used
preliminary to or in tandem with a real estate brokerage
service, but that it is not a substitute therefor because
he does not “do any brokerage services or anything else
that a real estate agent does” (Blagden dep., p. 17).
Rather, in applicant’s view, his services could eliminate
real estate brokerage.
Applicant advertises his services in newspapers;
through post card mailings; and on the Internet and by
sending advertisements to fax machines (Blagden dep., p.
54, and exhibits 10, 14, 17 and 18). His customers’
advertisements of their homes, with the two additional
lines including 800-RE-FAX-ME, and opposer’s
advertisements of homes for sale, have appeared in the
same newspaper and in fact in directly adjacent
advertisements. (“The Boston Sunday Globe,” August 27,
1995, Blagden dep., exhibit 4.)
Mr. Blagden acknowledges both that by the early to
mid 1980s he was aware of the mark RE/MAX and that it was
used by real estate brokers; and that opposer is probably
one of the top 20 real estate companies in the United
States.
Opposition No. 103814
9
We turn first to the question of priority. As noted
above, opposer filed a status and title copy of its
pleaded registration. In view of opposer’s ownership of
a valid and subsisting registration for its mark, the
issue of priority does not arise. See King Candy Company
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ
108 (CCPA 1974); and Carl Karcher Enterprises Inc. v.
Stars Restaurants Corp., 35 USPQ2d 1125 (TTAB 1995).
Moreover, opposer’s first use, as established in this
case, is 1973, whereas applicant’s established first use
is July 1995.
Thus, the sole issue before the Board is likelihood
of confusion. Our determination of likelihood of
confusion must be based on our analysis of all of the
probative facts in evidence that are relevant to the
factors bearing on the likelihood of confusion issue.
See Octocom Systems, Inc. v. Houston Computer Services,
Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1990); and
In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). Based on the record before us in
this case, we find that confusion is likely.
We consider first the du Pont factor of
similarity/dissimilarity and the nature of the parties’
respective services, as identified in the application and
Opposition No. 103814
10
opposer’s registration. See Canadian Imperial Bank of
Commerce, N.A. v. Wells Fargo Bank, 811 F.2d 1490, 1
USPQ2d 1813 (Fed. Cir. 1987); and In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
It is well settled that the involved services (or
goods) need not be identical or even competitive in order
to support a finding of likelihood of confusion. Rather,
it is sufficient that they are related in some manner or
that the circumstances surrounding their marketing are
such that they would be likely to be encountered by the
same persons under situations that would 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 the services (or goods). That
is, absolute identity of services (or goods) is not
required. See In re Melville Corp., 18 USPQ2d 1386 (TTAB
1991); and In re International Telephone & Telegraph
Corp., 197 USPQ 910 (TTAB 1978).
In the case now before us, opposer’s services,
identified in its registration as “real estate brokerage
services,” encompass a wide variety of real estate
services, including applicant’s services, identified as
“advertising services, namely, providing home sellers
Opposition No. 103814
11
with a telephone-facsimile forum for listing their
homes.” That is, there is no limitation in opposer’s
“real estate brokerage services,” and therefore,
opposer’s services could include providing home sellers
with a telephone-facsimile forum for listing their homes.
Moreover, the record establishes that opposer often
distributes/disseminates information on listed real
estate in a manner very similar to that employed by
applicant. Mr. Jesperson explained that once a property
has been listed by an agent, it is promoted in various
ways depending on the property. For example, some homes
may be advertised in “supermarket publications” such as
“Homes Illustrated”; expensive properties may be
advertised in national newspapers such as “The Wall
Street Journal” and “USA Today”; “horsey proprieties” may
have a specialized brochure made and distributed to
members of the “Arabian Horse Association.” He also
explained that faxing information about properties
between all interested parties (e.g., sales agents,
brokers, home sellers, home buyers) is the way the real
estate business communicates today. He specifically
testified that faxing the Multiple Listing Service
listings is “very commonplace, an everyday event”; and
although the information sent by applicant by fax is in a
Opposition No. 103814
12
different format from opposer’s, still the “information
about the properties is typically communicated by fax.”
(Jesperson dep., pp. 40-43).
We are not insensitive to applicant’s position that
he does not sell real estate through a traditional
brokerage agency, and that his is a new way to sell real
estate. Although applicant does not offer the full array
of real estate brokerage services, clearly applicant’s
services involve providing a particular method for people
to sell their homes. Any specific differences in the
parties’ respective services in this case is not
controlling because applicant’s services are encompassed
within opposer’s services as identified in its
registration; and, in any event, the salient question to
be determined is not whether the services of the parties
are likely to be confused, but rather whether there is a
likelihood that the public will be misled into the belief
that the services originate from a common source. See
The State Historical Society of Wisconsin v. Ringling
Bros.-Barnum & Bailey Combined Shows, Inc., 190 USPQ 25,
30 (TTAB 1976).
People selling their homes (or considering selling
their homes) look in home sales advertisements for a
sense of the market, and thus, they would be aware of
Opposition No. 103814
13
advertisements by various companies intended to induce
the seller to utilize their respective real estate
services. That is, purchasers of the real estate
services such as opposer’s, or “advertising services”
relating to home sales, such as applicant’s, are likely
to assume, if the services are offered under confusingly
similar marks, that the services are in some way
sponsored by or associated with the same source. See
Seligman & Latz, Inc. v. Merit Mercantile Corporation,
222 USPQ 720 (TTAB 1984).
We find that opposer’s services as identified in its
registration and the services identified in applicant’s
application are similar in nature, and applicant’s
services overlap with or are encompassed by opposer’s
services.
The next relevant du Pont factors are the channels
of trade and the similarity of purchasers. As explained
previously, the Board must consider the services as
identified in the involved application and registration.
Because neither identification is limited, the services
set forth in applicant’s application and opposer’s
registration must be presumed to move through all normal
channels of trade and be available to all potential
customers. See In re Elbaum, 211 USPQ 639 (TTAB 1981).
Opposition No. 103814
14
There is no question that both parties’ offer their
services to the general public and, specifically, both
parties offer their services to persons interested in
selling their homes. Although applicant is not offering
a real estate brokerage service, he is offering
essentially a real estate listing service for home
sellers through similar, and sometimes identical channels
of trade (e.g., both applicant and opposer advertise
their respective services in newspapers) to the same
purchasers or potential purchasers (home sellers).
Another du Pont factor we consider in this case is
the strength of opposer’s mark. Opposer has demonstrated
that its mark is very strong and well-known in the real
estate business. In particular, opposer has engaged in a
significant number of home sale transactions conducted
under the mark RE/MAX for over twenty years, and its
agents have spent a substantial dollar amount over the
years for consumer-directed advertising and promotion of
the RE/MAX mark. Thus, opposer’s well-known mark is
entitled to a broad scope of protection.5 See Cunningham

5 We are reluctant to find, on the record before us, that
opposer’s RE/MAX mark is “famous.” This is because opposer did
not provide the breakdown of its United States sales and
advertising figures, or place the sales and advertising figures
in any context, for example, whether opposer is the leading or
one of the leading real estate brokerages in the United States.
(Further, we realize that the “sales” figures for opposer are,
Opposition No. 103814
15
v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed.
Cir. 2000); and Henry Siegel Co. v. M & R International
Mfg. Co., 4 USPQ2d 1154, 1161 (TTAB 1987).

in fact, the total dollar value of the homes sold through
RE/MAX, and do not reflect the number of units sold.) Also,
opposer provided no direct evidence of consumer recognition of
the mark. In short, opposer has left us to speculate as to the
sales and advertising numbers for the United States, and
opposer’s place in the real estate industry. See Fossil Inc. v.
Fossil Group, 49 USPQ2d 1451, 1457 (TTAB 1998); and General
Mills Inc. v. Heath Valley Foods, 24 USPQ2d 1270, 1277 (TTAB
1992).
Opposition No. 103814
16
Turning next to a consideration of the involved
marks, we must analyze the similarities/dissimilarities
as to sound, appearance, connotation and commercial
impression. The marks RE/MAX and RE-FAX, when viewed in
their entireties, are similar in sound and appearance.
The only differences between these marks are that
applicant’s mark has an “F” instead of an “M,” and a
hyphen instead of a slash. Both marks, which consist of
two syllables, rhyme. The purchasing public may not
notice the difference of one letter when the marks are
spoken. See Steelcase Inc. v. Steelcare Inc., 219 USPQ
433 (TTAB 1983).
The evidence shows that RE is an abbreviation for
“real estate,” and we therefore find that the public
would understand that “RE” connotes “real estate” in both
parties’ marks. Although “max” and “fax” obviously
convey different meanings, e.g., “maximum” and
“facsimile,” when the marks are considered in their
entireties, purchasers will view RE-FAX as a variation of
RE/MAX, and assume that opposer has adopted RE-FAX for
this specialized method (“telephone-facsimile forum”) of
listing homes for sale. Thus, even though purchasers may
realize that applicant’s mark is different from opposer’s
mark, they are likely to view both marks as indicating
Opposition No. 103814
17
services emanating from a single source. That is, they
are likely to believe that applicant’s mark is a variant
of opposer’s mark, used in connection with real estate
services which emphasize facsimile transmissions.6
Finally, we disagree with opposer’s argument that a
wrongful intent on the part of applicant in adopting his
mark RE-FAX can be inferred. Although applicant
acknowledges that he was aware of opposer as a real
estate broker since the early to mid 1980s, and he
conceded, albeit reluctantly, that opposer is probably
among the top 20 real estate companies in the United
States, mere knowledge of another’s mark does not
establish bad faith or wrongful intent.
On balance, and considering all of the evidence on
the relevant du Pont factors, and giving each such factor
its appropriate weight in the circumstances of this case,
we find that confusion is likely between applicant’s mark
RE-FAX and opposer’s mark RE/MAX when used on their
respective services.

6 While we recognize that the sale of a home is a major consumer
transaction (for the buyer and the seller), the record before us
contains no evidence regarding the sophistication of the
involved purchasers or the degree of care that would be utilized
in choosing a listing service for the sale of one’s home (as
distinguished from the obvious degree of care that would be
utilized in deciding whether to sell one’s home or in choosing
which home to buy).
Opposition No. 103814
18
Decision: The opposition is sustained, and
registration to applicant is refused.
E. J. Seeherman
B. A. Chapman
G. F. Rogers
Administrative Trademark Judges,
Trademark Trial and Appeal Board