United Country Real Estate, LLCv.United Realty, Inc.

Trademark Trial and Appeal Board

Aug 29, 2018

No. 92064069 (T.T.A.B. Aug. 29, 2018)

This Opinion is Not a
Precedent of the TTAB

Hearing: June 28, 2018 Mailed: August 29, 2018

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

United Country Real Estate, LLC
v.
United Realty, Inc.
_____

Cancellation No. 92064069
_____

Daniel A. Crowe, Matthew G. Minder and Steven G. Trubac of Bryan Cave Leighton
Paisner LLP, for United Country Real Estate, LLC.
.
Erik M. Pelton of Erik M. Pelton & Associates, PLLC,
for United Realty, Inc.
_____

Before Wellington, Kuczma and Greenbaum,
Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:
United Country Real Estate, LLC (“Petitioner”) seeks to cancel United Realty,
Inc.’s (“Respondent”) registration on the Principal Register for the mark UNITED
REALTY, INC. (in standard characters, REALTY, INC. disclaimed) for “Real estate
agencies; Real estate brokerage” services in International Class 361 under Section

1 Registration No. 4776243 issued on the Principal Register on July 21, 2015 from an
application filed November 13, 2014 under Section 1(a) of the Trademark Act, 15 U.S.C.
§ 1051(a).
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2(d) of the Trademark Act, 15 U.S.C. § 1052(d), asserting priority and a likelihood of
confusion with its mark UNITED (in typed form), registered on the Principal
Register, for “real estate brokerage services” in International Class 36.2 Petitioner
also asserts that it has made prior common law use of UNITED and UNITED-
formative marks in connection with real estate brokerage services. For purposes of
this proceeding, Petitioner’s claim of common law rights is unnecessary, and we have
not considered it in making our decision.
As a second ground for cancellation, Petitioner asserts that Respondent committed
fraud on the USPTO under Section 14(3) of the Trademark Act, 15 U.S.C. § 1064(3)
based on false averments of exclusive rights in the mark in the procurement of the
involved registration.
In its answer, Respondent denied the salient allegations of the petition, and
asserted the affirmative defenses of laches and acquiescence.3
Both parties submitted briefs and, on June 28, 2018, presented arguments at oral
hearing before this panel.

2 Registration No. 1109683, issued December 19, 1978 from an application filed May 18, 1978.
Trademark Act §§ 8 and 15 affidavits accepted and acknowledged. Second renewal. Prior to
November 2, 2003, “standard character” drawings were known as “typed” drawings. TMEP
§ 807.03(i) (October 2017).
3 These affirmative defenses are deemed waived because Respondent pursued neither of them
in its brief. See Alcatraz Media, Inc. v. Chesapeake Marine Tours Inc. dba Watermark Cruises,
107 USPQ2d 1750, 1753 n.6 (TTAB 2013). Respondent’s other putative affirmative defenses
are merely amplifications of its denials, as Respondent acknowledges in its answer via the
heading titled “Affirmative Defenses & Amplifications” (4 TTABVUE 5), and are construed
as such.
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I. Evidentiary Matters
Petitioner filed motions to strike (1) the trial transcript from a civil action styled
United Country Real Estate, LLC v. United Realty Group, Inc., Case No. 16-cv-60154
(S.D. Fla) (“Florida Case”), submitted under Respondent’s Second Notice of Reliance,
and (2) search result lists from the corporation/business registration databases of
seven states of entities whose legal names include the term UNITED, submitted
under Respondent’s Fourth Notice of Reliance. Petitioner maintained the objections
in its brief, and expanded the objections concerning the Florida Case to include the
Final Judgment and Findings of Fact and Conclusions of Law (“Florida Decision”),
i.e., the entirety of Respondent’s Second Notice of Reliance. The motions are
contested.4 We grant the motions for the reasons discussed below.
A. Documents from the Florida Case
Petitioner objects to admission of documents from the Florida Case which purport
to be from the file of a trademark infringement proceeding involving Petitioner and
an unrelated third party.5 The trial transcript, which includes the testimony of
multiple witnesses, does not qualify as an “official record” because it was created and
made of record by the parties to the Florida Case who are not “public officials.”6 The
Board has stated that “[t]he ‘official records’ referred to by the rule are records

4 Respondent’s response to the motion is attached to its brief.
5 Moreover, as Petitioner points out in its motion to strike, Respondent did not file a motion
to introduce the trial testimony from the Florida Case.
6 These are not official records, nor do they constitute documents which are admissible under
any other category of documents which may be submitted via notice of reliance.
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prepared by a public officer which are self-authenticating in nature (and hence
require no extrinsic evidence of authenticity as a condition precedent to
admissibility), such as certified copies of public records.” Conde Naste Publ’ns Inc. v.
Vogue Travel, Inc., 205 USPQ579, 580 n.5 (TTAB 1979). See also Hiraga v. Arena, 90
USPQ2d 1102, 1104 (TTAB 2009) (“There are no official markings or signatures on
this form and it is not a record ‘prepared by a public officer.’”). Further, and in any
event, we would not accept the factual statements contained in the trial transcript as
evidence of the proof of those facts because the statements constitute hearsay.7 Fed.
R. Evid. 801(c); Safer Inc. v. OMS Invs., Inc., 94 USPQ2d 1031, 1040 (TTAB 2010);
see also Couch/Braunsdorf Affinity, Inc. v. 12 Interactive, LLC, 110 USPQ2d 1458,
1467 n.30 (TTAB 2014) (Internet webpage evidence admissible only to show what has
been printed and not for the truth of what has been printed), cited in WeaponX Perf.
Prods. Ltd. v. Weapon X Motorsports, Inc., 126 USPQ2d 1034, 1040 (TTAB 2018).
Additionally, while the Florida Decision is admissible as an official record, the Florida
Decision is not binding on us as it was based on the record before that court in a case
that involved only one of the parties herein.

7 Respondent’s brief is peppered with references to the evidence and the District Court’s
findings in the Florida Case concerning third-party uses of the term “United” in their
company names, strongly suggesting that we follow suit. See Applicant’s Brief, 29 TTABVUE
22-23; see also id. at 9 (“The record shows that in 2017, Petitioner was denied in its efforts in
a District Court infringement proceeding featuring very similar facts regarding the use of
UNITED REALTY GROUP for real estate brokerage services.”), 33-34 (“As noted by the
Florida court just a few months [ago] in a similar dispute dismissed in favor of UNITED
REALTY GROUP, Petitioner’s ‘UNITED marks have diminished commercial strength.’”),
and 39 (“The facts here are not significantly different from the recent Florida District Court
proceeding the Petitioner brought against UNITED REALTY GROUP. Petitioner’s claims in
that case were dismissed by the Court.”).
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B. Search Result Lists From State Corporate Records Divisions
Respondent submitted as Exhibits 10-16 of Respondent’s Fourth Notice of
Reliance search result lists from the corporate/business registration databases of
several state agencies of both active and suspended business entities that contain
UNITED as part of their business names. Search result lists are neither printed
publications nor official records, and thus are not admissible under Trademark Rule
2.122(e)(2), 37 C.F.R. § 2.122(e)(2). See Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546,
1550 (TTAB 2012) (search summary inadmissible because it merely offers links to
information not otherwise of record); Calypso Tech., Inc. v. Calypso Capital Mgmt.,
LP, 100 USPQ2d 1213, 1219 (TTAB 2011). Cf. Lebanon Seaboard Corp. v. R&R Turf
Supply Inc., 101 USPQ2d 1826, 1829 n.8 (TTAB 2012) (summary of search results
from USPTO’s electronic database is not an official record of the Office). In addition,
Exhibits 14 and 16 do not identify access dates or source URLs as Trademark Rule
2.122(e)(2) requires.8 See Calypso Tech., 100 USPQ2d at 1218 (Internet materials
submitted under notice of reliance must bear access date and URL on their face).
II. The Record
The record consists of the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), the file of Registration No. 4776243.

8 Even if we had considered the search result lists, however, their probative value would be
limited only to what they show on their face, i.e., that third-party businesses in several states
registered their names in the various states’ corporation records, and many of them have
since allowed the registrations to become inactive. The listings are not evidence of use of the
term UNITED in connection with any listed business, let alone evidence that the term
UNITED is weak or diluted in the field of real estate services, which is the purpose for which
they have been submitted. See Applicant’s Brief, 29 TTABVUE 20-22.
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A. Petitioner’s Testimony and Evidence
Petitioner submitted declaration testimony from the following witnesses:
1. Anthony J. (Tony) Arko, Managing Broker of URE Washington D.C. LLC
d/b/a United Real Estate Washington, D.C. (“United DC”), with a
confidential exhibit;9
2. Adam Teeple, a real estate agent with National Realty, LLC;10
3. Mark Daniel (Dan) Duffy, President and CEO of Five D I, LLC, the sole
member of Petitioner, with exhibits;11
4. Mark Daniel (Dan) Duffy (as rebuttal).12
In addition, Petitioner filed a Notice of Reliance on:
1. Copies from the Trademark Status & Document Retrieval (TSDR) database
showing the current status and title of Petitioner’s pleaded Registration No.
1109683 for the mark UNITED,13 and other UNITED and UNITED-
formative marks for which Petitioner pleaded prior common law use;14
2. Portions of the discovery deposition of Tony Yeh, President of Respondent
and Respondent’s Rule 30(b)(6) witness, with exhibits,15 and certain

9 8 TTABVUE (testimony); 9 TTABVUE (confidential exhibit).
10 12 TTABVUE.
11 13 TTABVUE (redacted); 14 TTABVUE (confidential).
12 26 TTABVUE.
13 7 TTABVUE 7-16.
14 7 TTABVUE 17-43.
15 10 TTABVUE 2-54.
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admissions made by Respondent in answer to Petitioner’s Requests for
Admissions;16
3. Excerpts of the file histories of third party trademark applications and
TTAB decisions finding a likelihood of confusion with Petitioner’s UNITED
marks.17
B. Respondent’s Testimony and Evidence
Respondent submitted the declaration testimony of Tony Yeh, President of
Respondent, with exhibits;18
Respondent also filed Notices of Reliance on:
1. TSDR printouts of third party registrations for UNITED and UNITED-
formative marks;19 and
2. Additional excerpts from the 30(b)(6) discovery deposition of Tony Yeh,
purportedly which should in fairness be considered so as to not make
misleading what was offered by Petitioner.20
III. Standing
“A petitioner is authorized by statute to seek cancellation of a mark where it has
‘both a “real interest” in the proceedings as well as a “reasonable” basis for its belief
of damage.’” Empresa Cubana Del Tabaco v. Gen. Cigar Co., 753 F.3d 1270, 111

16 10 TTABVUE 55-61.
17 11 TTABVUE.
18 20 TTABVUE.
19 16 TTABVUE.
20 18 TTABVUE.
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USPQ2d 1058, 1062 (Fed. Cir. 2014) (quoting ShutEmDown Sports, Inc. v. Lacy, 102
USPQ2d 1036, 1041 (TTAB 2012) and citing Ritchie v. Simpson, 170 F.3d 1092, 50
USPQ2d 1023 (Fed. Cir. 1999)). Petitioner’s prior registration for a mark similar to
Respondent’s mark, for the same “real estate brokerage” services that are identified
in Respondent’s registration, establish Petitioner’s real interest and standing. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir.
2000) (petitioner’s prior registrations establish “direct commercial interest and its
standing to petition for cancellation”); Lipton Indus., Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185, 189 (CCPA 1982).
IV. Priority
In a cancellation proceeding such as this one in which both parties own
registrations, the petitioner must prove priority of use. Brewski Beer Co. v. Brewski
Bros., Inc., 47 USPQ2d 1281, 1283-84. (TTAB 1998). The May 18, 1978 filing date of
the application that matured into Petitioner’s pleaded registration precedes by more
than thirty-five years the November 13, 2014 filing date of the application that
matured into Respondent’s challenged registration. See id. at 1284 (a petitioner may
rely on a registration it owns to establish first use as of the application filing date).
Respondent has neither alleged nor proven an earlier priority date. Further,
Respondent “[a]dmitted, to the extent the public records are true and correct,” that
the pleaded registration is valid and subsisting and owned by Petitioner, and that the
filing date of the application underlying the pleaded registration precedes the filing
date of the application underlying Respondent’s registration as well as Respondent’s
Cancellation No. 92064069
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claimed first use of the mark in that registration.21 Accordingly, we find that
Petitioner has established priority of use for the mark UNITED for the real estate
brokerage services set forth in the registration.
V. 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). See also In re Majestic Distilling Co., 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 or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d
1098, 192 USPQ 24 (CCPA 1976). We discuss below these and other relevant factors.
See M2 Software, Inc. v. M2 Commc’ns, Inc., 450 F.3d 1378, 78 USPQ2d 1944, 1947
(Fed. Cir. 2006) (even within du Pont list, only factors that are “relevant and of
record” need be considered).
A. Similarity of the Parties’ Services and Channels of Trade

We begin with the du Pont factors involving the relatedness of the services and
the similarity of established, likely to continue channels of trade. We base our
evaluation on the services as they are identified in the registrations. Stone Lion
Capital Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1171
(Fed. Cir. 2014); Octocom Sys. Inc. v. Hous. Computs. Servs. Inc., 918 F.2d 937, 16

21 Respondent’s Answers to Request for Admission Nos. 1-2, and 5-6, respectively. 10
TTABVUE 55-57.
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USPQ2d 1783, 1787 (Fed. Cir. 1990). The services are identical or nearly identical as
Petitioner’s registration identifies “real estate brokerage” services, and Respondent’s
registration identifies “real estate agencies” and “real estate brokerage” services.
Further, because the involved services are identical or nearly so, and neither
registration contains any limitations as to the channels of trade and classes of
purchases, we must presume that they are the same. In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (absent restrictions in an application or
registration, the identified goods, if identical, are “presumed to travel in the same
channels of trade to the same class of purchasers.”) (quoting Hewlett-Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1001 (Fed. Cir. 2002)); see also
Stone Lion, 110 USPQ2d at 1161; In re Fat Boys Water Sports LLC, 118 USPQ2d
1511, 1518-19 (TTAB 2016). Respondent confirmed this presumption by admitting,
in answer to Request for Admission No. 7, that the identified services “are directly
competing.”22
Moreover, the record amply demonstrates that Petitioner and Respondent both
offer real estate brokerage services to buyers and sellers of real estate,23 they both
offer their services in the same metropolitan Washington, DC geographic area,24 and
they both advertise in the same manner (e.g., yard signs, real estate magazines,

22 10 TTABVUE 57. Respondent also admitted, in answer to Request for Admission No. 8,
that the identified services are “closely related.” Id.
23 26 TTABVUE 2-3; 10 TTABVUE 11 and 20 TTABVUE 3.
24 20 TTABVUE 2-3, ¶¶ 3-6, 11 and 8 TTABVUE 2-3, ¶¶ 3-7.
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industry events).25 In addition, Respondent’s president, Tony Yeh, personally has
shown properties offered for sale by Petitioner’s clients to buyers represented by
Respondent.26
These du Pont factors strongly favor a finding of likelihood of confusion.
B. Strength of Petitioner’s UNITED Mark
We next evaluate the strength of Petitioner’s mark because it affects the scope of
protection to which the mark is entitled. Petitioner argues under the fifth du Pont
factor that its UNITED mark should be deemed famous within the real estate
brokerage industry, while Respondent contends, under the sixth du Pont factor, that
Petitioner’s mark should be accorded a narrow scope of protection due to the number
and nature of similar marks in use in connection with similar services. du Pont, 177
USPQ at 567. We consider the factors in tandem. Bell’s Brewery, Inc. v. Innovation
Brewing, 125 USPQ2d 1340, 1345 (TTAB 2017).
“In determining strength of a mark, we consider both inherent strength, based on
the nature of the mark itself, and commercial strength or recognition.” Id. at 1345
(citing Couch/Braunsdorf, 110 USPQ2d at 1476); see also In re Chippendales USA
Inc., 622 F.3d 1346, 96 USPQ2d 1681, 1686 (Fed. Cir. 2010) (“A mark’s strength is
measured both by its conceptual strength (distinctiveness) and its marketplace
strength (secondary meaning).”). Market strength is the extent to which the relevant

25 26 TTABVUE 3 and 13 TTABVUE 12-14, 16; 10 TTABVUE 12, 14-17, 25-39 and 20
TTABVUE 3, 5-6.
26 10 TTABVUE 19 (30(b)(6) Deposition of Tony Yeh, p. 107:10-107:21).
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public recognizes a mark as denoting a single source. Tea Board of India v. Republic
of Tea Inc., 80 USPQ2d 1881, 1899 (TTAB 2006). We turn first to evidence concerning
the commercial strength of Petitioner’s UNITED mark.
1. Commercial Strength
As noted above, Petitioner contends that its UNITED mark is a famous mark.
Fame, if it exists, plays a dominant role in the likelihood of confusion analysis; famous
marks enjoy a broad scope of protection or exclusivity of use because they have
extensive public recognition and renown. Bose Corp. v. QSC Audio Prods. Inc., 293
F.3d 1367, 63 USPQ2d 1303, 1305 (Fed. Cir. 2002); Recot Inc. v. M.C. Becton, 214
F.3d 1322, 54 USPQ2d 1894, 1897 (Fed. Cir. 2000); Kenner Parker Toys, Inc. v. Rose
Art Indus. Inc., 963 F.2d 350, 22 USPQ2d 1453, 1456 (Fed. Cir. 1992). “[L]ikelihood
of confusion fame ‘varies along a spectrum from very strong to very weak.’” Joseph
Phelps Vineyards, LLC v. Fairmount Holdings, LLC, 857 F.3d 1323, 122 USPQ2d
1733, 1734 (Fed Cir. 2017) (quoting Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005)
(quoting In re Coors Brewing Co., 343 F.3d 1340, 68 USPQ2d 1059, 1063 (Fed. Cir.
2003))).
The commercial strength of Petitioner’s UNITED mark may be measured
indirectly by the volume of sales and advertising expenditures in connection with the
services sold under the mark, and other factors such as how long the mark has been
used; widespread critical assessments; notice by independent sources of the services
identified by the mark; and the general reputation of the services. Tao Licensing, LLC
v. Bender Consulting Ltd., 125 USPQ2d 1043, 1056 (TTAB 2017); see also Bose, 63
Cancellation No. 92064069
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USPQ2d at 1305-06 and 1309. Although raw numbers of product sales and
advertising expenses sometimes suffice to prove fame, raw numbers alone may be
misleading. Some context in which to place the raw numbers may be reasonable (e.g.,
the substantiality of the sales or advertising figures for comparable types of products
or services). Id. at 1309.
Finally, because of the extreme deference that we accord a famous mark in terms
of the wide latitude of legal protection it receives, and the dominant role fame plays
in the likelihood of confusion analysis, it is the duty of the party asserting that its
mark is famous to clearly prove it. Coach Servs., Inc. v. Triumph Learning LLC,
668 F.3d 1356, 101 USPQ2d 1713, 1720 (Fed. Cir. 2012) (citing Leading Jewelers
Guild Inc. v. LJOW Holdings LLC, 82 USPQ2d 1901, 1904 (TTAB 2007)).
Through the testimony of Mr. Duffy (and associated exhibits), Petitioner provided
a variety of such indirect evidence of commercial strength, some of which is
confidential and therefore will be discussed only in general terms. Petitioner and its
predecessors have used the UNITED mark for real estate brokerage services
continuously since 1925, both as a standalone mark, and as part of composite marks
with designs and/or wording that describe a particular market segment or division.27
Petitioner’s sales and advertising figures from 2007-2015 are quite substantial, with
combined advertising expenditures by Petitioner, its affiliates and its franchisees
ranging between $16 - $24 million annually, and gross revenues ranging from $10.7
- $38.0 million annually, with steady growth from 2009 to 2015, and revenues of $42.7

27 13 TTABVUE 4, 10 ¶¶ 4, 29.
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million in 2016.28 Petitioner advertises its UNITED real estate brokerage services
through a property catalog featuring the mark UNITED on its cover that Petitioner’s
predecessor launched in 1928, and which Petitioner still distributes today. As
recently as 2005, Petitioner distributed more than 1 million catalogs per year.29 Mr.
Duffy provided extensive other testimony concerning Petitioner’s marketing efforts,
including attending and hosting real estate conventions, advertising in prominent
real estate publications, magazines, local and national newspapers, and the Yellow
Pages, advertising through radio, television, billboards, brochures, flyers, direct mail
campaigns, and on the Internet through targeted email campaigns and through social
media channels such as Facebook and LinkedIn, and by building and supporting
thousands of websites for use by Petitioner’s joint ventures and franchisees to market
their brokerage and agency services and to recruit prospective agents.30 He also
provided impressive (confidential) metrics concerning the online traffic and user
sessions of online users who “were not just surfing the web, but actively viewing our
over 20,000 active listings.”31
Respondent criticizes this evidence for lack of context and lack of differentiation
among Petitioner’s various UNITED-formative marks. However, as Petitioner points
out in its reply brief, Petitioner has provided some context in the industry by
providing, as a point of comparison, Respondent’s advertising and sales figures.

28 Id. at 14-15, ¶¶ 45-46, and confidential exhibits 40-41.
29 Id. at 11, ¶ 32.
30 Id. at 11-14, ¶¶ 31-43.
31 Id. at 12-13, ¶ 38.
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Petitioner also explains that it currently operates two divisions, United Country,
which focuses on rural, country and vacation properties, and United Real Estate,
which focuses on urban, residential properties, and both divisions use the mark
UNITED. Mr. Duffy testified that “[t]ogether, United Country and United Real
Estate have more than 500 offices and more than 6,000 agents, all providing real
estate brokerage services under the UNITED® mark.”32
In addition, Mr. Duffy testified that Petitioner and both of its divisions have
received numerous awards and recognition.33
48. For example, Stefan Swanepoel’s TRENDS Report has
recognized United Real Estate several times including: (a)
naming United Real Estate as a “frontrunner” in the real
estate industry in 2013; (b) naming United Real Estate as
“part of the next generation of real estate brokers” in 2014;
(c) listing United Real Estate executives in the “Power 200
Most Influential” in both 2015 and 2016. United Real
Estate was named to the Inc. 5000 List of America’s
Fastest-Growing Companies in both 2015 and 2016.
49. United Country has also received numerous awards,
including being named (a) Top 1% Franchise by the
Franchise Business Review every year from 2010-2015; (b)
a Top 25 High Performer by The Wall Street Journal; (c) #1
Real Estate Franchise by Dun and Bradstreet’s
AllBusiness.com; and (d) Best Brokerages by Land Report
Magazine in its 2014 summer issue.
50. [Petitioner] and United Real Estate have received over
50 USA Today/NAA national marketing awards.
51. United Real Estate was prominently featured on CBS’
Undercover Boss in May, 2016.

32 Id. at 4, ¶ 13.
33 Id. at 16, ¶¶ 47-51.
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He also testified extensively about Petitioner’s enforcement actions in various
district courts, before the Board, through arbitration, and through termination of
franchise agreements.34
On this record, we find that Petitioner’s UNITED mark is commercially strong.
2. Conceptual Strength/Third-Party Uses
The parties dispute the conceptual strength of Petitioner’s UNITED mark for real
estate brokerage services. Petitioner’s UNITED mark (Registration No. 1109683)
issued on the Principal Register without a claim of acquired distinctiveness under
Section 2(f) of the Trademark Act, 15 U.S.C. § 1052(f), and a “mark that is registered
on the Principal Register is entitled to all Section 7(b) presumptions including the
presumption that the mark is distinctive and moreover, in the absence of a Section
2(f) claim in the registration, that the mark is inherently distinctive for the goods [or
services].” Tea Board of India, 80 USPQ2d at 1889. Nonetheless, Respondent argues
that the word “united” means “joined together as a group,” and that is “highly
suggestive” and therefore weak for real estate services. 29 TTABVUE 19.
Respondent, however, does not explain the significance of the term “united,” as
defined, with respect to real estate services, and we are aware of none other than as
a source identifier for the services.35
Respondent also points in its brief to twenty-two third-party registrations of
marks that contain the word UNITED for real estate services as evidence that

34 Id. at 17-23, ¶¶ 53-56.
35 Nor do we find persuasive Respondent’s unsupported statement that “UNITED is
commonly short for ‘UNITED STATES.’” 29 TTABVUE 19.
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UNITED is conceptually weak.36 29 TTABVUE 23-29. Evidence of third-party use
and registration of a term in the relevant industry is considered in the likelihood of
confusion analysis. Juice Generation, Inc. v. GS Enters. LLC, 794 F.3d 1334, 115
USPQ2d 1671, 1674-75 (Fed. Cir. 2015); Jack Wolfskin Ausrustung Fur Draussen
GmbH & Co. KGAA v. New Millennium Sports, S.L.U., 797 F.3d 1363, 116 USPQ2d
1129, 1135-36 (Fed. Cir. 2015) (same). In this case, however, Respondent relies
exclusively on the aforementioned third-party registrations, and submitted no
evidence that any of the registered marks is in use. Such registrations are not
evidence that the marks therein are in use on a commercial scale or that the public
has become familiar with them. Smith Bros. Mfg. Co. v. Stone Mfg. Co., 177 USPQ
462, 463 (CCPA 1973); see also In re Morinaga Nyugyo Kabushiki Kaisha, 120
USPQ2d 1738, 1745 (TTAB 2016) (“Applicant’s citation of third-party registrations
as evidence of market weakness is unavailing because third-party registrations
standing alone, are not evidence that the registered marks are in use on a commercial
scale, let alone that consumers have become so accustomed to seeing them in the
marketplace that they have learned to distinguish among them by minor
differences.”).
The probative evidentiary value of the third-party registrations alone is in
showing the sense in which the term UNITED is used and understood. Juice

36 Respondent’s other evidence has been excluded via our evidentiary rulings above. We note
again, however, that consideration of the excluded evidence would not have affected our
decision herein because it is not probative to show use of the term UNITED in connection
with real estate services.
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Generation, 115 USPQ2d at 1675; Tektronix, Inc. v. Daktronics, Inc., 534 F.2d 915,
189 USPQ 693 (CCPA 1976) (third-party registrations “may be given some weight to
show the meaning of a mark in the same way that dictionaries are used”); Institut
Nat’l Des Appellations D’Origine v. Vintners Int’l Co., 958 F.2d 1574, 22 USPQ2d
1190, 1196 (Fed. Cir. 1992) (“Third party registrations show the sense in which the
word is used in ordinary parlance and may show that a particular term has
descriptive significance as applied to certain goods or services.”). As the Board
recently explained, third-party registrations can be used in the manner of a
dictionary as “evidence that a term is suggestive or descriptive of the relevant goods
or services. Such terms may be conceptually weak because the more descriptive a
term is, the less likely prospective purchasers are to attach source-identifying
significance to it.” Morinaga, 120 USPQ2d at 1745-46. But even if the term “united”
has a recognized meaning, Respondent’s third-party registration evidence does not
support a finding that the meaning is descriptive of real estate services. Indeed, as
with the dictionary definition discussed above, Respondent has not explained how
any of the third-party registrations use the term “united” in a manner descriptive of
real estate.
To the extent Respondent bases its argument that “united” is conceptually weak
on the volume of third-party registrations of record, a closer inspection reveals that
fifteen of the twenty-two are for marks containing the term UNITED with
distinguishing matter such as additional wording or a design, or both. The additional
matter in the fifteen registrations results in marks with commercial impressions that
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differ from the term UNITED, standing alone, which undercuts their probative
value.37 The remaining third party registrations for marks that contain the term
UNITED38 are few in number, and fall well short of the “voluminous” and “extensive”
evidence presented in Jack Wolfskin, 116 USPQ2d at 1136 (at least fourteen relevant
third-party uses or registrations of record), or of that in Juice Generation, 115
USPQ2d at 1673 n.1 (at least twenty-six relevant third-party uses or registrations of
record).39 Nor do we consider the record analogous to that in Primrose Retirement
Communities, LLC v. Edward Rose Senior Living, LLC, 122 USPQ2d 1030 (TTAB

37 The marks are: UNITED FIRE GROUP; VETERANS UNITED; UNITED OVERSEAS
BANK; MILITARY UNITED; BANK UNITED and design; GEORGIA UNITED CREDIT
UNION and design; INVESTORS UNITED; AIR, LAND & SEA. UNITED.; UNITED WE
SAVE; CASHUNITED INTERNATIONAL; UWM UNITED WHOLESALE MORTGAGE and
design; UNITED PROPERTIES SOUTHWEST and design; BANKUNITED; UNITED
STATES REAL ESTATE (stylized); and UNITED ONE RESOURCES and design.
38 The marks are: UNITED PROPERTIES; UNITED BROKERS GROUP; UNITED
AMERICAN MORTGAGE; UNITED TITLE; UNITED WHOLESALE MORTGAGE; and
UNITED MULTI FAMILY. The seventh registration, for the mark UNITED COMMERCIAL
REALTY (Reg. No. 3067628), was cancelled on October 21, 2016, because the registrant failed
to file a Section 8 declaration of continued use. “The existence of a cancelled registration—
particularly one cancelled for failure to provide a declaration of continued use—does not tend
to show that the cited mark is weak due to third-party use.” In re Inn at St. John’s, LLC,
126 USPQ2d 1742, 1745 (TTAB 2018), citing Bond v. Taylor, 119 USPQ2d 1049, 1054 (TTAB
2016) (“The existence of a cancelled registration and an abandoned application does not
establish that Opposer’s mark is weak.”).
39 Nor does the quantity of evidence approach that presented in In re Unidos Financial
Services, Inc., Serial No. 77126814 (TTAB 2010), a non-precedential decision to which
Respondent cites (29 TTABVUE 18, 28-29), in which the Board found no likelihood of
confusion between UNITED and
(…UNIDOS…AL ALCANCE DE TU MANO in multiple colors, translated to “UNITED
WITHIN YOUR REACH”). In that case, the Board stated that twenty-five third-party
registrations that included the term UNITED in the financial services field, which was at
issue therein, “suggest that UNITED is one of those ubiquitous terms, like ACME, used in
many registered trademarks in the financial field and, more specifically, in connection with
money transfer and related services ….” We also reiterate the axiomatic principle that we
must assess each case on its own facts and record. In re Nett Designs Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001).
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2016), an inter partes case in which this du Pont factor carried great weight. In that
case, in addition to the eight third party registrations, the record included more than
85 actual uses of ROSE-formative marks for similar services, as well as expert
testimony and other evidence regarding the common nature of ROSE-formative
marks in the industry. Id. at 1034-35. Again, we have no such actual use evidence of
record.
Considering the record as a whole, we find that Respondent’s third-party
registration evidence does not demonstrate conceptual weakness, and therefore does
not narrow the scope of protection to which Petitioner’s inherently distinctive and
commercially strong mark UNITED is entitled.
C. Similarity of the Marks
We turn next to the first du Pont factor of the similarity of the parties’ marks. In
a likelihood of confusion analysis, we compare the marks in their entireties for
similarities and dissimilarities in appearance, sound, connotation and commercial
impression. Stone Lion, 110 USPQ2d at 1160. “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., 101
USPQ2d at 1721 (Fed. Cir. 2012). The marks “‘must be considered … in light of the
fallibility of memory ….’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082,
1085 (Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components
Corp., 565 F.2d 683, 196 USPQ 1 (CCPA 1977)). The focus is on the recollection of the
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average purchaser, who normally retains a general rather than a specific impression
of trademarks. In re Binion, 93 USPQ2d 1531 (TTAB 2009); Sealed Air Corp. v. Scott
Paper Co., 190 USPQ 106 (TTAB 1975). Here, the average customer includes
members of the general public who are interested in buying or selling real estate.
In addition, and of particular relevance here, where the parties use their marks
in connection with identical services, the similarity between the marks necessary to
support a determination that confusion is likely declines. Bridgestone Ams. Tire
Operations LLC v. Fed. Corp., 673 F.3d 1330, 102 USPQ2d 1061, 1064 (Fed. Cir.
2012); Century 21 Real Estate Corp. v. Century Life of Am., 970 F.2d 874, 23 USPQ2d
1698 (Fed. Cir. 1992).
When considered in their entireties, we find Petitioner’s mark UNITED to be very
similar to Respondent’s mark UNITED REALTY, INC. due to the shared term
UNITED. Respondent admits that the term UNITED is the dominant portion of its
mark UNITED REALTY, INC.40 The additional wording in Respondent’s mark does
not distinguish Respondent’s mark from Petitioner’s mark because, as Respondent
also admits, “realty” is generic of the identified real estate brokerage services, and
the term “Inc.” is an entity designation with no source identifying capability.41 See In
re Nat’l Data Corp., 224 USPQ 749, 752 (Fed. Cir. 1985) (the “descriptive component
of a mark may be given little weight in reaching a conclusion on likelihood of

40 Respondent’s Amended Responses to Petitioner’s Requests for Admission No. 14. 10
TTABVUE 58.
41 Respondent’s Amended Responses to Petitioner’s Requests for Admission Nos. 10 and 12,
10 TTABVUE 57-58.
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confusion”); see also In re Wm. B. Coleman Co., 93 USPQ2d 2019, 2025 (TTAB 2010)
(with respect to ELECTRIC CANDLE COMPANY, “Electric Candle” is a unitary
generic term and “‘Company’ is simply a designation for a type of entity without
source-identifying capability.”). We also note that Respondent appropriately has
disclaimed the non-source identifying terms REALTY, INC. See In re Dixie Rests. Inc.,
105 F.3d 1405, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997).
In addition, while there is no rule that a likelihood of confusion is present where
one mark encompasses another, in this case, as in many others, the fact that
Respondent’s mark includes the entirety of Petitioner’s mark increases the similarity
between the two. See, e.g., Wella Corp. v. California Concept Corp., 558 F.2d 1019,
194 USPQ 419, 422 (CCPA 1977) (finding CALIFORNIA CONCEPT marks
substantially similar to prior mark CONCEPT); Coca-Cola Bottling Co. of Memphis,
Tennessee, Inc. v. Joseph E. Seagram and Sons, Inc., 526 F.2d 556, 188 USPQ 105
(CCPA 1975) (applicant’s mark BENGAL LANCER for club soda, quinine water and
ginger ale is likely to cause confusion with BENGAL for gin).
Finally, both marks are in standard characters (or the legal equivalent) and thus
not limited to any particular depiction. The rights associated with a standard
character mark reside in the wording and not in any particular display. In re RSI
Sys. LLC, 88 USPQ2d 1445, 1448 (TTAB 2008); In re Pollio Dairy Prods. Corp., 8
USPQ2d 2012, 2015 (TTAB 1988); Trademark Manual of Examining Procedure
(“TMEP”) § 1207.01(c)(iii) (Oct. 2017). We must consider both standard character
marks “regardless of font style, size, or color,” Citigroup Inc. v. Capital City Bank
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Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1259 (Fed. Cir. 2011), including iterations
emphasizing the shared term UNITED.
We find that when viewed in their entireties, the marks are very similar in all
respects. The first du Pont factor thus weighs heavily in favor of a finding that
confusion is likely.
D. Conditions of Sale
Next, we consider the conditions under which the services are likely to be
purchased, e.g., whether on impulse or after careful consideration, as well as the
degree, if any, of sophistication of the consumers. “Purchaser sophistication may tend
to minimize likelihood of confusion. Conversely, impulse purchasers of inexpensive
items may tend to have the opposite effect.” Palm Bay, 73 USPQ2d at 1695. We
acknowledge that real estate brokerage services of the type rendered by Petitioner
and Respondent might sometimes involve careful and discriminating purchasers. It
is settled, however, that even sophisticated purchasers are not immune from source
confusion, especially where identical services are offered under very similar marks,
as is the case here. See In re Research Trading Corp., 793 F.2d 1276, 230 USPQ 49,
50 (Fed. Cir. 1986) (“Human memories even of discriminating purchasers … are not
infallible.”). Moreover, real estate brokerage services are offered to a wide range of
consumers, including members of the general public, many of whom are not likely to
be sophisticated in the purchasing and selling of real estate, much less capable of
distinguishing between the sources of identical real estate brokerage services
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rendered under very similar marks. This factor also favors a finding of a likelihood of
confusion.
E. Actual Confusion
Under the seventh and eighth du Pont factors, we consider the nature and extent
of any actual confusion, in light of the length of time and conditions under which
there has been contemporaneous use of the parties’ subject marks. du Pont, 177
USPQ at 567. Proof of actual confusion is not necessary to show a likelihood of
confusion, In re i.am.symbolic, llc, 866 F.3d 1315, 123 USPQ2d 1744, 1747 (Fed. Cir.
2017), but “[a] showing of actual confusion may be highly probative, if not conclusive,
of a likelihood of confusion.” Majestic Distilling, 65 USPQ2d at 1205.
Respondent’s President and founder, Tony Yeh, testified that since the late 1980s,
Respondent has been a “real estate brokerage and agency operating in the
metropolitan Washington, DC area,” with offices in Vienna, VA and Montgomery
County, MD.42 According to Petitioner’s witness Tony Arko,43 Petitioner has offered
real estate brokerage and real estate agency services in same metropolitan
Washington, DC area since September 2012 through its affiliate, United DC.44 Mr.
Arko testified that he has encountered confusion among real estate professionals
concerning the source, association or affiliation between United Real Estate and

42 20 TTABVUE 2-3, ¶¶ 3-6, 11.
43 As noted above, Mr. Arko is the Managing Broker of United DC and the regional manager
for United Real Estate. 8 TTABVUE 2-3, ¶¶ 1, 6.
44 Id. at 2-3, ¶¶ 3-7.
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Respondent “particularly in the first two years,” i.e., 2012-2014, after United DC
entered the metropolitan Washington, DC area.45
Mr. Arko also testified that “over the past few years,” he has received “numerous
oral reports” from United DC’s recruiters and real estate agents concerning confusion
among real estate agents and/or brokers, that he “continue[s] to encounter real estate
professionals, including agents and brokers, who are confused into believing that
United Real Estate is the same company as, or is otherwise affiliated with,
Respondent,”46 and that many of these real estate professionals “have asked me about
or spoken to me about a United Real Estate office in Vienna, Virginia,”47 a location in
which Respondent, but not Petitioner, maintains an office.48
According to Mr. Arko, “Real estate professionals, including agents and brokers,
frequently and improperly refer to United DC and local United Real Estate franchises
as ‘United Realty.”49 “In my experience, real estate professionals including agents
and brokers, often fail to distinguish any differences among the marks UNITED,
UNITED REAL ESTATE, and UNITED REALTY, INC.”50 Mr. Arko detailed one such
instance: a May 9, 2017 meeting with real estate agent Adam Teeple “to evaluate the
possibility of Mr. Teeple joining United DC as a real estate agent,”51 in which Mr.

45 Id. at 3, ¶ 8-9.
46 Id. at 5, ¶ 15.
47 Id. at 5, ¶ 17,
48 Id. at 5, ¶ 16.
49 Id. at 5, ¶ 22.
50 Id. at 6, ¶ 23.
51 Id. at 6, ¶ 24.
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Teeple asked about a United Real Estate office in Vienna, VA, which Mr. Teeple
mistakenly believed was affiliated with United Real Estate.52
In his testimony declaration, Mr. Teeple corroborated Mr. Arko’s rendition of their
meeting.53 Mr. Teeple summarized his confusion concerning United DC’s office in
Reston, VA and Respondent’s office in Vienna, VA as follows: “I was confused into
believing that the two offices referenced above were two office locations of the same
company.”54 “In viewing the names of the respective companies in the marketplace, I
saw only the use of United and United. I did not notice the additional wording Realty,
Inc. or Real Estate.”55
Respondent does not challenge Mr. Teeple’s testimony. Moreover, while
Respondent raises some objections to Mr. Arko’s testimony, Respondent does not
challenge his testimony that real estate professionals “frequently and improperly
refer to United DC and local United Real Estate franchises as ‘United Realty’” or that
they frequently fail to distinguish among UNITED, UNITED REAL ESTATE and
UNITED REALTY, INC.56 Thus, even if we were to not consider Mr. Arko’s
challenged testimony, or to accord it limited probative weight, the remaining
testimony of Mr. Arko and Mr. Teeple is highly probative of a likelihood of confusion.
Majestic Distilling, 65 USPQ2d at 1205. This testimony also is consistent with our

52 Id. at 6, ¶¶ 25-29.
53 12 TTABVUE 2-3, ¶¶ 4-7.
54 Id. at 3, ¶ 9.
55 Id. at 9, ¶ 10.
56 8 TTABVUE 5-6, ¶¶ 22-23.
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evaluation of the other du Pont factors and our assessment as to whether confusion
is likely.
VI. Conclusion
Having considered all the evidence and arguments bearing on the relevant du
Pont factors, we conclude that Petitioner has established, by a preponderance of the
evidence, that Respondent’s registered mark so resembles Petitioner’s earlier used
and registered mark as to be likely to cause confusion, mistake or deception.
Given our conclusion regarding likelihood of confusion, we need not address
Petitioner’s fraud claim. See Azeka Bldg. Corp. v. Azeka, 122 USPQ2d 1447, 1478
(TTAB 2017) (stating that the Board has “‘discretion to decide only those claims
necessary to enter judgment and dispose of the case,’ as our ‘determination of
registrability does not require, in every instance, decision on every pleaded claim.’”)
(quoting Multisorb Tech., Inc., v. Pactive Corp., 109 USPQ2d 1170, 1171 (TTAB
2013)).
Decision: The petition for cancellation is granted and Registration No. 4776243
will be cancelled in due course.