Royal Realty Corp.

Trademark Trial and Appeal Board

Apr 22, 2021

88380382 (T.T.A.B. Apr. 22, 2021)

This Opinion is Not a
Precedent of the TTAB

Mailed: April 22, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Royal Realty Corp.
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Serial No. 88380382
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Daniel D. Frohling and Tatyana V. Gilles of Loeb & Loeb LLP,
for Royal Realty Corp.
Jules Dean, Trademark Examining Attorney, Law Office 120,
David Miller, Managing Attorney.
_____

Before Kuhlke, Heasley and English,
Administrative Trademark Judges.

Opinion by Kuhlke, Administrative Trademark Judge:
Royal Realty Corp. (“Applicant”) seeks registration on the Principal Register for
the mark LIVE ON POINT in standard characters for “Real estate services, namely,
leasing and management of buildings,” in International Class 36.1
The Trademark Examining Attorney has refused registration of Applicant’s mark
under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that

1 Application Serial No. 88380382 filed on April 10, 2019 based on an allegation of a bona fide
intention to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1051(b).
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Applicant’s mark, when used in connection with the identified services, so resembles
the registered marks ON POINT CAROLINAS REALTY (standard characters)2 and
3 for “Real estate sales management; Real estate advertising services;
Real estate marketing services,” in International Class 35 and “Real estate valuation
services; Residential real estate agency services; Providing a database of information
about residential real estate listings in different neighborhoods and communities,”
in International Class 36, as to be likely to cause confusion. Both registrations have
the same owner and include a disclaimer for the wording CAROLINAS REALTY.
When the Section 2(d) refusal was made final, Applicant appealed and requested
reconsideration. On July 9, 2020, the Examining Attorney denied the request, the
appeal resumed and briefs have been filed. We reverse the refusal.4

2 Registration No. 5058585, issued on October 11, 2016.
3 Registration No. 5058586, issued on October 11, 2016. The composite mark includes the
following description and color claim:
The mark consists of navy fencing with light blue fencing mirroring it from
below in the style of a reflection above the phrase “On Point Carolinas Realty”,
where “On Point” is directly below the fencing in burgundy and “Carolinas
Realty” is below “On Point” in navy blue. All of the same appearing on a white
field.
The color(s) navy blue, light blue, burgundy, and white is/are claimed as a feature
of the mark.
4 Citations to TTABVUE throughout the decision are to the Board’s public online database
that contains the appeal file, available on the USPTO website, www.USPTO.gov. The first
number represents the docket number in the TTABVUE electronic case file and the second
represents the page number(s).
Citations to the examination record refer to the USPTO’s online Trademark Status and
Document Retrieval system (TSDR).
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I. Likelihood of Confusion
When the question is likelihood of confusion, we analyze the facts as they relate
to the relevant factors set out in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357,
177 USPQ 563, 567 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). We consider each DuPont factor for
which there is evidence and argument. See In re Guild Mortg. Co., 912 F.3d 1376, 129
USPQ2d 1160, 1162-63 (Fed. Cir. 2019); see also M2 Software, Inc. v. M2 Commc’ns,
Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947 (Fed. Cir. 2006) (even within the DuPont
list of factors, only factors that are “relevant and of record” need be considered).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29
(CCPA 1976) (“The 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.”); see also In re i.am.symbolic, LLC, 866 F.3d 1315, 123
USPQ2d 1744, 1747 (Fed. Cir. 2017) (“The likelihood of confusion analysis considers
all [DuPont] factors for which there is record evidence but ‘may focus . . . on dispositive
factors, such as similarity of the marks and relatedness of the goods [or services].”’)
(quoting Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 64 USPQ2d 1375,
1380 (Fed. Cir. 2002)). Another factor to be considered when there is evidence of
record is the number and nature of similar marks in use with similar services.
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DuPont, 177 USPQ at 567; see also Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d
1334, 115 USPQ2d 1671, 1674 (Fed. Cir. 2015). We focus our analysis on the standard
character mark in Registration No. 5058585 because if we do not find a likelihood of
confusion with respect to this registered mark, then there would be no likelihood of
confusion with the mark and services in the other cited registration. See In re Max
Capital Grp. Ltd., 93 USPQ2d 1243, 1245 (TTAB 2010).
A. Relatedness of the Services, Trade Channels and Classes of Consumers
We must make our determination based on the services as they are identified in
the application and cited registration. See In re Dixie Rests. Inc., 105 F.3d 1405, 41
USPQ2d 1531, 1534 (Fed. Cir. 1997). See also Stone Lion Capital Partners, L.P. v.
Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir. 2014); Hewlett-
Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir.
2002); Octocom Sys., Inc. v. Houston Computer Servs. Inc., 918 F.2d 937, 16 USPQ2d
1783, 1787 (Fed. Cir. 1990). The issue is not whether the services will be confused
with each other, but rather whether the public will be confused as to their source. See
Recot Inc. v. M.C. Becton, 214 F.3d 1322, 54 USPQ2d 1894, 1898 (Fed. Cir. 2000)
(“[E]ven if the goods [or services] in question are different from, and thus not related
to, one another in kind, the same goods [or services] can be related in the mind of the
consuming public as to the origin of the goods [or services].”). It is sufficient that the
services of the applicant and the registrant are related in some manner or that the
conditions surrounding their marketing are such that they are likely to be
encountered by the same persons under circumstances that, because of the marks
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used in connection therewith, would lead to the mistaken belief that they originate
from the same source. On-line Careline Inc. v. Am. Online Inc., 229 F.3d 1080, 56
USPQ2d 14711, 1476 (Fed. Cir. 2000). The application and registrations themselves
may provide evidence of the relationship between the services. Hewlett-Packard v.
Packard Press, 62 USPQ2d at 1005.
The record shows that the respective services are legally identical and otherwise
closely related. Applicant’s services are “Real estate services, namely, leasing and
management of buildings,” and Registrant’s are “Real estate sales management;
Real estate advertising services; Real estate marketing services,” in International
Class 35 and “Real estate valuation services; Residential real estate agency
services; Providing a database of information about residential real estate listings
in different neighborhoods and communities.”5
Registrant’s broadly worded “real estate agency services” encompass Applicant’s
leasing and management of buildings.” Further, the relationship between the various
real estate agency services is illustrated by the examples of third-party use. The
Examining Attorney submitted excerpts from third-party websites showing
Applicant’s and Registrant’s types of services offered under the same mark in the
same channels of trade. A few examples are set forth below:
Nomadic Real Estate showing real estate leasing,
management valuation, databases and sales from a
single location;6

5 Bolding is provided for ease of reference.
6 May 22, 2019 Office Action at 11-15 (www.nomadicrealestate.com).
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Coakley Realty showing a wide variety of real estate
services, including real estate agency, leasing,
management, valuation, databases and sales from a
single location;7
Sherman Agency showing real estate agency, leasing,
management, valuation, databases and sales from a
single location;8
CBRE showing a wide variety of real estate services,
including real estate agency, leasing, management,
valuation, databases and sales form a single location;9
and
EJF showing real estate agency, leasing,
management, valuation, advertising, databases and
sales from a single location.10
Those examples show the market context in which consumers are exposed to the
same mark being used for the relevant services, indicating single source and
overlapping trade channels.
Further, because there are no limitations as to channels of trade or classes of
consumers, we presume that Applicant’s and Registrant’s services are offered in the
ordinary channels of trade and offered to all the usual classes of purchasers for these
services. Levi Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107
USPQ2d 1167, 1173 (Fed. Cir. 2013); In re Thor Tech, Inc., 90 USPQ2d 1634, 1638
(TTAB 2009) (“We have no authority to read any restrictions or limitations into the
registrant’s description of goods.”). In the case of Applicant’s services encompassed

7 Id. at 16-23 (www.coakleyrealty.com).
8 Id. at 24-29 (www.theshermanagency.com).
9 December 17, 2019 Office Action at 6-9 (www.cbre.us).
10 Id. at 10-28 (www.ejfrealestate.com).
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by Registrant’s broadly worded services, we must presume that Applicant’s and
Registrant’s services will be offered in the same channels of trade and will be
purchased by the same classes of consumers. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (TTAB 2012).
Applicant does not dispute the relatedness of the services and overlap in trade
channels, simply the weight to be accorded these factors in relation to the comparison
of the marks.
In view thereof, the relationship between the services and the overlap in their
channels of trade favor a finding of likelihood of confusion.
B. Similarity/Dissimilarity of the Marks and Commercial Weakness of ON
POINT
We compare Applicant’s mark LIVE ON POINT and Registrant’s mark ON
POINT CAROLINAS REALTY in their entireties as to “appearance, sound,
connotation and commercial impression.” Palm Bay Imps. Inc. v. Veuve Clicquot
Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1691 (Fed. Cir.
2005) (quoting DuPont, 177 USPQ at 567). “Similarity in any one of these elements
may be sufficient to find the marks confusingly similar.” In re Inn at St. John’s, 126
USPQ2d 1742, 1746 (TTAB 2018), aff’d, 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing
In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). “The proper test is not a side-by-
side comparison of the marks, but instead ‘whether the marks are sufficiently similar
in terms of their commercial impression’ such that persons who encounter the marks
would be likely to assume a connection between the parties.” Coach Servs., Inc. v.
Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012). In
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evaluating the similarities between marks, the emphasis must be on the recollection
of the average purchaser, who normally retains a general, rather than specific,
impression of trademarks. In re Bay State Brewing Co., 117 USPQ2d 1958, 1960
(TTAB 2016) (citing Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741
(TTAB 1991), aff’d per curiam, 972 F.2d 1353 (Fed. Cir. 1992)).
Our analysis cannot be predicated on dissecting the marks into their various
components; that is, the decision must be based on a comparison of the entire marks,
not just part of the marks. In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751
(Fed. Cir. 1985). See also Franklin Mint Corp. v. Master Mfg. Co., 667 F.2d 1005, 212
USPQ 233, 234 (CCPA 1981) (“It is axiomatic that a mark should not be dissected
and considered piecemeal; rather, it must be considered as a whole in determining
likelihood of confusion.”). However, “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, provided
the ultimate conclusion rests on consideration of the marks in their entireties.” In re
Nat’l Data, 224 USPQ at 751.
The Examining Attorney reasons that the shared “arbitrary” wording ON POINT
is “distinctive and dominant in both the applicant’s and registrant’s marks.” 11
TTABVUE 5. In support of his conclusion that ON POINT is the dominant element
in Registrant’s mark, the Examining Attorney points to the placement of the wording
ON POINT at the beginning of the mark and the disclaimer for the remaining
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wording CAROLINAS REALTY. We agree the wording ON POINT is the more
dominant and identifying element in Registrant’s mark.
We cannot agree, however, with the Examining Attorney’s assertion that ON
POINT is the dominant element, separate from the word LIVE, in Applicant’s mark.
The Examining Attorney contends that:
[T]he addition of the term “LIVE” in applicant’s mark
merely directs the consumer’s attention to the wording that
follows, namely, “ON POINT.” The term “LIVE” may be
interpreted as a command that draws attention to the
wording “ON POINT” and merely expresses an intention
with respect to the applicant’s real estate services. For this
reason, the wording “ON POINT” is more dominant than
the word “LIVE” in the applied-for mark. As such, the
wording “ON POINT” remains the dominant feature of the
applied-for mark in a likelihood of confusion analysis. …
[T]he focus of the marks would be the wording “ON POINT”
because the applicant’s mark gives the impression of living
on the point, while “ON POINT” would be the commercial
impression of the registered marks because it is the only
dominant portion of the registered marks. Hence, the
recollection of the average purchaser for these marks
would be on the wording “ON POINT”.
11 TTABVUE 8-9.
However, LIVE ON POINT reads as a unitary phrase. By contrast, ON POINT
CAROLINAS REALTY separates into two separate phrases ON POINT and
CAROLINAS REALTY.
In addition, coming as the first word in the phrase, the invitation to LIVE in a
certain manner, ON POINT, draws more attention to the word LIVE. Palm Bay v.
Veuve Clicquot, 73 USPQ2d at 1692 (finding “VEUVE . . . remains a ‘prominent
feature’ as the first word in the mark and the first word to appear on the label”);
Presto Prods. Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988).
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In this regard, the record includes the definitions for ON POINT as “relevant and
appropriate to what is happening or being discussed” and “extremely good, attractive,
or stylish.”11 Applicant argues that the “meaning and commercial impression is far
from that created by the Cited Marks. There, ON POINT does not even refer to
consumers; it refers to the registrant, and it tells consumers that the registrant’s
services are directly relevant and attuned to Carolina homebuyers’ needs. … These
differences in connotation and overall commercial impression substantially
differentiate the parties’ marks.” 9 TTABVUE 22. Applicant further argues that the
“wording ‘CAROLINAS REALTY’ clearly places the registrant and its services in a
particular geographic area… .” 9 TTABVUE 23.
Keeping these differences in mind, we turn to consider the commercial strength or
weakness of the shared term ON POINT. In comparing the marks we consider third-
party uses to determine whether “customers have become so conditioned by a
plethora of such similar marks that customers ‘have been educated to distinguish
between different [such] marks on the bases of minute distinctions.’” Palm Bay v.
Veuve Clicquot, 73 USPQ2d at 1694 (cleaned up). Applicant has submitted 43
examples of third-party use of ON POINT for various realty services. A few examples
from Applicant’s chart summarizing them are reproduced below:12

11 June 17, 2020 Request for Reconsideration at 25 (OXFORD DICTIONARY
https://www.lexico.com).
12 November 22, 2019 Response at 27-33. See also id. at 34, 38, 47, 50, 104, 133, 142; and
generally at 34-152.
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These examples show use of ON POINT for real estate services across the United
States including in Registrant’s area as shown below.13

(https://onpointrealtync.com)

The Examining Attorney minimizes the weight of these examples by noting that:
[T]he applicant has not provided evidence of any third-
party registered marks which comprise the wording “ON
POINT”. Here, the two registrations owned by a single
registrant are insufficient to establish that the wording
“ON POINT” is weak or diluted. Moreover, the applicant
cites the cases Juice Generation, 794 F.3d 1334, 115
USPQ2d 1671 and Primrose Ret. Cmtys., 122 USPQ2d
1030 as relevant decisions. See October 13, 2020,
Applicant’s Appeal Brief, TSDR p. 15-18. These cases
showed that evidence of several third party registrations
combined with paramount evidence of third party use not
on the register could cause specific wording in a mark to
become diluted or weak. See Juice Generation, Inc. v. GS
Enters. LLC, 794 F.3d 1334 (Fed. Cir. July 20, 2015) at
1339 … However, the difference between the cases
referenced by the applicant and the instant application is
that, in the cases referenced by the applicant, numerous
third party registrations supported a finding that the
marks were entitled to a narrower scope[] of protections.

13 November 22, 2019 Response at 44.
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Here, the record does not include evidence of third-party
registrations for similar marks.
11 TTABVUE 10.
This is an incorrect reading of the case law. In fact, examples of third-party use
indicate whether a mark or portion of a mark is commercially weak. In Juice
Generation the Court reiterated that evidence of third-party use of similar marks on
similar goods (or services) can show that a mark is relatively weak and entitled to a
narrow scope of protection. Juice Generation v. GS Enters., 115 USPQ2d at 1674. The
Court went on to say that despite the lack of specifics as to the extent and impact of
third-party use, the “fact that a considerable number of third parties use similar
marks was shown in uncontradicted testimony.” Id.14
The Court further observed that third-party registrations may show the sense in
which a mark is used in ordinary parlance and whether it has a normally understood
and well-recognized descriptive or suggestive meaning that could lead to a conclusion
of conceptual weakness. Id. 115 USPQ2d at 1675. The Court explained that the third-
party registrations added to the consideration of the weakness of the mark because
“if there is no evidence of actual use” then “third-party registrations” “may be given
some weight to show the meaning of a mark in the same way that dictionaries are
used.” Juice Generation v. GS Enters., 115 USPQ2d at 1675 (quoting Textronix, Inc.
v. Daktronics, Inc., 534 F.2d 915, 917 (CCPA 1976)). While third-party registrations

14 Juice Generation was an inter partes case and we do not have testimony supporting the
evidence of third-party use; however, in ex parte proceedings the Board generally takes a
somewhat more permissive stance with respect to the probative value of evidence. See
TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP) § 1208 (2020).
Serial No. 88380382
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add to the weight of evidence regarding the conceptual strength or weakness of a
mark, the absence of third-party registrations does not diminish the probative value
of the evidence of third-party use. Third-party registrations are not evidence of what
happens in the marketplace. AMF Inc. v. Am. Leisure Prods., Inc., 474 F.2d 1403, 177
USPQ 268, 269 (CCPA 1973).
Here, the marketplace is filled with real estate firms offering services under the
phrase ON POINT. It is used so commonly that potential consumers would
distinguish marks that include the phrase ON POINT based on minute distinctions.
Palm Bay v. Veuve Clicquot, 73 USPQ2d at 1694.
Applicant’s mark has the commercial impression of a unitary phrase beginning
with the word LIVE, exhorting consumers to LIVE ON POINT. By contrast, the
commercial impression of Registrant’s mark is to inform customers that their services
are “on point” and are directed to a specific geographic location. These distinctions
are sufficient to distinguish the marks, given the commercial weakness of ON POINT
in connection with similar services.
In terms of appearance, sound, connotation, and commercial impression, we find
the marks — considered in their entireties — are distinguishable. In view thereof,
the similarity of these marks weighs against a likelihood of confusion.
II. Conclusion
In balancing the relevant factors, we find the differences between the marks—in
particular given the commercial weakness of the shared term and the differences in
overall commercial impression—sufficient to avoid likely confusion despite the legally
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identical and otherwise closely related services and trade channels. “No mechanical
rule determines likelihood of confusion, and each case requires weighing of the facts
and circumstances of the particular mark.” In re Mighty Leaf Tea, 601 F.3d 1342, 94
USPQ2d 1257, 1259 (Fed. Cir. 2010) (citing Century 21 Real Estate Corp. v. Century
Life of Am., 970 F.2d 874, 23 USPQ2d 1698 (Fed. Cir. 1992)); see also Oakville Hills
Cellar, Inc. v. Georgallis Holdings, LLC, 826 F.3d 1376, 119 USPQ2d 1286, 1290 (Fed.
Cir. 2016) (MAYA not confusingly similar to MAYARI) (quoting Kellogg Co. v.
Pack’em Enters., 951 F.2d 330, 21 USPQ2d 1142, 1144-45 (Fed. Cir. 1991) (“We know
of no reason why, in a particular case, a single duPont factor may not be dispositive”)).
Decision: The refusal to register Applicant’s mark is reversed.