W.T. Adams & Co.

Trademark Trial and Appeal Board

Jul 25, 2013

No. 85015200 (T.T.A.B. Jul. 25, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed:
July 25, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re W.T. Adams & Co.
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Serial No. 85015200
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Albert A. Chapar, Jr. of The Chapar Firm, LLC for W.T. Adams & Co.

Jenny Park, Trademark Examining Attorney, Law Office 104 (Chris Doninger,
Managing Attorney).
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Before Zervas, Cataldo and Adlin, Administrative Trademark Judges.

Opinion by Adlin, Administrative Trademark Judge:
W.T. Adams & Co. (“applicant”) seeks registration under Section 2(f) of the
Act of the mark ADAMS, in standard characters, for “Commercial and residential
real estate agency services.”1
The examining attorney refused registration of the mark under Section 2(d)
of the Act, on the ground that applicant’s mark, when used in connection with
applicant’s services, so resembles the previously-registered mark SMITH ADAMS,

1 Application Serial No. 85015200, filed April 15, 2010 based on claimed first use
dates of August 10, 1979. William T. Adams provided his consent to registration of the
mark.
Serial No. 85015200
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in standard characters, for, inter alia, “real estate brokerage services; consulting
services in the field of assisting and preparing individuals and entities to buy and
sell residential real estate; real estate appraisal and valuation services,”2 as to be
likely to cause confusion.
After the refusal was made final, applicant appealed. Applicant and the
examining attorney filed briefs. We affirm the refusal to register.
Analysis
Our determination under Section 2(d) is based on an analysis of all probative
facts in evidence that are relevant to the factors bearing on the issue of likelihood of
confusion. 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 Company, Inc., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (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, 29 (CCPA 1976) (“The fundamental inquiry
mandated by § 2(d) goes to the cumulative effect of differences in the essential
characteristics of the goods and differences in the marks.”). We discuss each of the
du Pont factors concerning which applicant or the examining attorney submitted
argument or evidence. To the extent that any other du Pont factors for which no

2 Registration No. 3737832, issued January 12, 2010. The registration is also for
services in International Class 42, and includes the following statement: “The name(s),
portrait(s), and/or signature(s) shown in the mark does not identify a particular living
individual.”
Serial No. 85015200
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evidence or argument was presented may nonetheless be applicable, we treat them
as neutral.
Turning first to the services, applicant concedes that “[i]t is undisputed that
the services provided by the Applicant and Registrant are closely related.”
Applicant’s Reply Brief at 2. We find, however, that applicant’s and registrant’s
services are not merely “closely related,” but are in fact legally identical. Indeed,
the examining attorney introduced dictionary definitions which reveal that a “real
estate broker”3 is “An intermediary who receives a commission for arranging and
facilitating the sale of a property for a buyer or a seller,” while a “real estate agent”
is “A person who facilitates the sale of real estate … A real estate agent receives a
commission for his/her services … A real estate agent is an employee of a real estate
broker.”4 Office Action of April 12, 2011. In other words, registrant’s “real estate
brokerage services” and its services which assist in the buying and selling of real
estate encompass applicant’s “real estate agency services,” and both applicant and
registrant specifically identify services related to residential real estate. Moreover,
registrant’s and applicant’s websites both make clear that their services are
essentially identical, because both applicant and registrant offer to assist in the
buying and selling of real estate. Id.
Because the services are legally identical, and neither applicant’s nor
registrant’s identification of services includes any limitation with respect to

3 http://financial-dictionary.thefreedictionary.com/Real+estate+brokerage
4 http://financial-dictionary.thefreedictionary.com/Real+estate+agency

Serial No. 85015200
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consumers or channels of trade, we presume that the services move in the same
channels of trade and are sold to the same classes of consumers. See American
Lebanese Syrian Associated Charities, Inc. v. Child Health Research Institute, 101
USPQ2d 1022, 1028 (TTAB 2011); In re Smith and Mehaffey, 31 USPQ2d 1531,
1532 (TTAB 1994) (“Because the goods are legally identical, they must be presumed
to travel in the same channels of trade, and be sold to the same class of
purchasers.”); In re Elbaum, 211 USPQ 639, 640 (TTAB 1981); see also In re Viterra
Inc., 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (even though there
was no evidence regarding channels of trade and classes of consumers, the Board
was entitled to rely on this legal presumption in determining likelihood of
confusion). These factors therefore both weigh heavily in favor of a finding of
likelihood of confusion.5
As for the marks, we must compare them “in their entireties as to
appearance, sound, connotation and commercial impression.” Palm Bay Imports
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1691 (Fed. Cir. 2005) (quoting du Pont, 177 USPQ at 567). That is,
we may not dissect the marks into their various components. 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). The test
is not whether the marks can be distinguished when subjected to a side-by-side

5 Applicant’s argument that confusion is unlikely because applicant and registrant
operate in distinct geographic areas is unavailing, because neither applicant’s application
nor the cited registration contains any geographic restriction. Giant Food, Inc. v. Nation’s
Foodservice, Inc., 710 F.2d 1565, 218 USPQ 390, 393 (Fed. Cir. 1983).
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comparison, but rather whether the marks are sufficiently similar in terms of their
overall commercial impression that confusion as to the source of the goods and
services offered under the respective marks is likely to result. San Fernando Elec.
Mfg. Co. v. JFD Electronics Components Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA
1977); Spoons Rests. Inc. v. Morrison Inc., 23 USPQ2d 1735, 1741 (TTAB 1991).
The focus is on the recollection of the average purchaser (in this case a real estate
buyer or seller), who normally retains a general rather than a specific impression of
trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB
1975).
In this case, registrant’s mark SMITH ADAMS is comprised of two extremely
common surnames. In fact, applicant introduced evidence that SMITH is the most
common surname in the United States while ADAMS is the 36th most common
surname in the United States, falling in between “Green” and “Baker.” Office
Action response of January 24, 2011 Ex. A. We therefore disagree with the
examining attorney’s position that ADAMS is the dominant portion of registrant’s
mark. We find instead that there is no dominant component of registrant’s mark,
because both SMITH and ADAMS will likely be construed as surnames, perhaps the
surnames of certain firm founders or partners. Moreover, because the entire mark
is in standard character format without emphasis on either name, both of which are
comprised of five letters, there is no basis upon which to find that one name is more
dominant than the other. As for applicant’s mark, the evidence establishes that
ADAMS is the surname of applicant’s President William T. (Bill) Adams, as made
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clear by applicant’s website and Mr. Adams’s consent to registration of his surname.
Office Action of April 12, 2011.
The question is how these marks will be perceived by the “average
purchaser,” many (and perhaps most) of whom will be unfamiliar with who the
surnames in the respective marks identify, if anyone. We agree with the examining
attorney that these average purchasers could very well believe that the ADAMS
firm is a division, subsidiary or affiliate of SMITH ADAMS, or perhaps that
ADAMS is a reconstituted SMITH ADAMS firm following the departure of a
partner named SMITH. Alternatively, average purchasers may believe that
ADAMS is a shortened or re-branded version of or nickname for SMITH ADAMS.
Indeed, the examining attorney introduced two articles concerning the current
marketing trend of shortening entity names. One of the articles provides examples
such as YMCA rebranding itself as “The Y,” Pizza Hut rebranding itself as “The
Hut” and Radio Shack rebranding itself as “The Shack.” Office Action of April 12,
2011. The other article addresses law firms shortening their names, and is perhaps
more analogous to the real estate firms at issue in this proceeding, because law firm
names are often comprised of the surnames of firm partners. According to this
article, there is sometimes a desire for firm names to reflect how a firm is known
“on the street,” and firms may not want to convey the impression of several partners
simply sharing office space, but instead the impression of a single, integrated firm.
Id. This evidence supports the examining attorney’s position that average
purchasers could believe that ADAMS is affiliated in some way with SMITH
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ADAMS, because consumers are becoming more accustomed to firm names being
abbreviated. In short, we find that the similarity of the marks weighs in favor of a
finding of likelihood of confusion.
Finally, applicant argues that “[r]eal estate transactions are high value
transactions, where buyers are particularly careful.” Applicant’s Appeal Brief at 8.
While the record is devoid of any evidence supporting this argument, even if we
were to agree with applicant on this point, it is settled that even sophisticated
purchasers are not immune from source confusion. This is especially true where, as
here, they are faced with similar marks and identical services. In re Research
Trading Corp., 793 F.2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986); Carlisle Chem.
Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 168 USPQ 110, 112 (CCPA
1970); In re Decombe, 9 USPQ2d 1812, 1814-15 (TTAB 1988); see also, HRL
Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d 1819 (TTAB 1989), aff’d, Weiss
Associates, Inc. v. HRL Associates, Inc., 902 F.2d 1546, 14 USPQ2d 1840 (Fed. Cir.
1990) (similarities of goods and marks outweigh sophisticated purchasers, careful
purchasing decision, and expensive goods). This factor therefore does not outweigh
the similarity of the parties’ marks, legally identical services and overlapping
channels of trade.
Conclusion
While we are not free of any doubt regarding whether there is a likelihood of
confusion, two factors compel us to conclude that the refusal of registration was
appropriate. First, where, as here, the services recited in the application are legally
Serial No. 85015200
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identical to those in the cited registration, the degree of similarity between the
marks required to support a finding of likelihood of confusion is not as great as
would be required with diverse services. Shen Mfg. Co. v. Ritz Hotel Ltd., 393 F.3d
1238, 73 USPQ2d 1350, 1354 (Fed. Cir. 2004); Century 21, 970 F.2d at 874, 23
USPQ2d at 1701; Jansen Enterprises, Inc. v. Rind and Stone, 85 USPQ2d 1104,
1108 (TTAB 2007); Schering-Plough HealthCare Products, Inc. v. Ing-Jing Huang,
84 USPQ2d 1323, 1325 (TTAB 2007). Second, to the extent that applicant’s
arguments raise any doubt concerning the likelihood of confusion, we must resolve
it in registrant’s favor. In re Hyper Shoppes (Ohio), Inc., 837 F.2d 840, 6 USPQ2d
1025 (Fed. Cir. 1988); In re Martin’s Famous Pastry Shoppe, 223 USPQ at 1290.6
With these principles in mind, we have considered all of the evidence of record as it
pertains to the relevant du Pont factors, including applicant’s arguments and
evidence, even if not specifically discussed herein. In view of our findings that the
services and channels of trade are legally identical and the marks are similar, we
find that use of applicant’s mark would be likely to cause confusion with the cited
registered mark as applied to registrant’s services, notwithstanding any presumed
sophistication of the relevant purchasers.
Decision: The examining attorney’s refusal to register applicant’s mark
under Section 2(d) of the Act is affirmed.

6 A different record, containing for example evidence of third-party uses of SMITH
and/or ADAMS for related services, might have yielded a different result.