Berg and Wanninger, LLC

Trademark Trial and Appeal Board

Jan 22, 2007

No. 76594445 (T.T.A.B. Jan. 22, 2007)

THIS OPINION IS NOT
A PRECEDENT OF
THE T.T.A.B.

Mailed:
January 22, 2007

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Berg and Wanninger, LLC
________

Serial No. 76594445
_______

David R. Fairbairn of Kinney & Lange, P.A. for Berg and
Wanninger, LLC.

Aisha Clarke, Trademark Examining Attorney, Law Office 101
(Ron Sussman, Managing Attorney).
_______

Before Seeherman, Walters, and Bergsman, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Berg and Wanninger, LLC filed an intent-to-use
application to register the mark SKYFLATS (in standard
character form) for the following services, as amended:
“real estate services, namely, listing, leasing, brokerage,
sales and operations of non-luxury condominium residential
units.”1

1 Serial No. 76594445, filed May 27, 2004.
Serial No. 76594445
2
Registration has been refused under Section 2(d) of
the Lanham Act, 15 U.S.C. §1052(d). The trademark
examining attorney contends that the applicant’s mark, when
applied to applicant’s services, so closely resembles the
mark SKY HOMES for “real estate management services and
real estate brokerage services, namely, operation and sale
of luxury high-rise and mid-rise residences” as to be
likely to cause confusion, to cause mistake, or to deceive.2
When the refusal was made final, applicant appealed.
Applicant and the examining attorney have filed briefs.
We affirm.
The examining attorney contends that there is a
likelihood of confusion between applicant’s mark SKYFLATS
and registrant’s mark SKY HOMES because the marks are
similar, the services are related, and the services travel
in the same trade channels. The examining attorney asserts
that both marks share the word “Sky” as the first and most
salient feature of the marks, followed by a descriptive
word (i.e., “Flats” or “Homes”). Moreover, the words
“Flats” and “Homes” have related meanings in that “Flats”
(which are one level apartments) may be homes.

2 Registration No. 2771066, registered on October 7, 2003.
Registrant disclaimed the exclusive right to use the word
“Homes.”
Serial No. 76594445
3
With respect to the services, the examining attorney
argues that both the application and the registration
involve the sale and operation of residential units. The
examining attorney discounts applicant’s argument regarding
the restriction of the application to “non-luxury
residential condominiums” because there is no clear
distinction between “luxury” and “non-luxury” condominiums.
The examining attorney notes that there is no evidence of
any industry standard regarding “luxury” and “non-luxury”
properties and that applicant has promoted its condominium
development as “luxury living.” Indeed, the examining
attorney points out that applicant’s units are listed as
starting at over $500,000, well beyond what would be
considered “affordable” housing.
Finally, the examining attorney concludes that the
services of the parties move in the same channels of trade
because the applicant has not proven that the differences
between “luxury” and “non-luxury” properties are such that
the relevant purchasers would be different or that the
services would not be found in the same marketplace.
In support of her likelihood of confusion refusal, the
examining attorney relied on the following evidence:
1. Applicant’s website (www.cloud9skyflats.com)
which touts applicant’s property as having the
“comforts of luxury living”;
Serial No. 76594445
4
2. The Twin Cities Loft & Condo Living Tour website
(www.loftlivingtour.com) which previews
condominium projects in the Minneapolis/St. Paul
metropolitan area. This website lists
applicant’s CLOUD 9 SKYFLATS alongside “upscale”
condominiums (Silver Lake Village), “luxury
residences” (Phoenix On The River), and other
projects that “make you feel as though you’ve
just stepped into a five-star hotel” (Upper
Landing); 3

3. Registrant’s website
(http://wci.wcicommunities.com) which provides
information regarding a variety of floor plans
starting at $860,000 and the available amenities;
and,4

4. A news article appearing in the Multi-Housing
World website (http://mhw.com) entitled “WCI
Plans ‘Sky Homes’ In Pompano Beach” dated July
11, 2005. The article announces the plans for
the SKY HOMES project, which will offer
condominiums starting at $700,000.

Applicant argues that SKYFLATS is not likely to cause
confusion with SKY HOMES because the services of applicant
and registrant are readily distinguishable (i.e., applicant
seeks registration for services related to “non-luxury”

3 In her appeal brief, the Examining Attorney submitted another
portion of the Twin Cities Loft & Condo Living Tour website which
specifically promoted applicant’s development and listed the
price range for the residential units. The Board may consider
evidence submitted with a brief, despite its untimeliness, if the
nonoffering party (1) does not object, and (2) discusses the new
evidence or otherwise treats it as being of record. TBMP
§1207.03 and the cases cited therein. Because applicant did not
discuss the new evidence or otherwise treat it as being of
record, we have not considered the website printout attached to
the examining attorney’s brief.

4 While applicant’s project and registrant’s project share many
of the same amenities, registrant’s project has many extra
features such as a news café with a cappuccino/juice bar, a
virtual reality room, and a wine cellar and humidor.
Serial No. 76594445
5
condominiums while the registration is directed toward
“luxury” residences) and because they move in different
channels of trade. With respect to the channels of trade,
applicant explains that because real estate services are
local in nature, there is no basis for thinking that
consumers would associate a luxury condominium project in
Pompano Beach, Florida, with a condominium project in
Minneapolis, Minnesota.
Applicant also argues that the marks SKYFLATS and SKY
HOMES are not similar because the word “Sky” is not the
dominant portion of the marks and because the marks differ
in sight, sound, and meaning. Applicant asserts that “Sky”
is not the dominant portion of either mark because “Sky”
refers to the fact that the registrant’s condominiums
provide a sky-high view and that applicant’s project
likewise has a panoramic view. In other words, “Sky” has
“particular significance in the real estate field, and is
not an arbitrary term.” (Applicant’s Brief, p. 8). In
support of its argument, Applicant submitted nine (9)
third-party registrations for real estate related services
consisting of the word “Sky” as an element of the various
marks.

Serial No. 76594445
6
Finally, applicant argues that because buying a
condominium is generally the most significant commercial
transaction most people will undertake, consumers will
exercise a high degree of care in making such a purchase,
including investigating and researching the identity of the
seller.
Our determination under Section 2(d) is based on an
analysis of all of the probative facts in evidence that are
relevant to the factors bearing on the 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).

1. Applicant’s real estate services and registrant’s real
estate management and brokerage services are related.

In analyzing the similarity or dissimilarity of the
services, we start with the well-settled proposition that
it is not necessary that the services of the applicant and
registrant be similar or even competitive to support a
finding of likelihood of confusion. Likelihood of
confusion may be found if the respective services are
related in some manner and/or if the circumstances
surrounding their marketing are such that they would be
Serial No. 76594445
7
likely to be encountered by the same persons under
conditions that could give rise to the mistaken belief that
they emanate from the same source. In re Pollio Dairy
Products Corp., 8 USPQ2d 2012, 2015 (TTAB 1988); Seaguard
Corporation v. Seaward International, Inc., 223 USPQ 48, 51
(TTAB 1984).
In this case, applicant seeks to register SKYFLATS for
the following services:
Real estate services, namely, listing, leasing,
brokerage, sales and operation of non-luxury
condominium residential units.

The cited registration is for the following services:
Real estate management services and real estate
brokerage services, namely, operation and sale of
luxury high-rise and mid-rise residences.

Because the application and registration both include
real estate brokerage services and the operation and sale
of residences, some of the services listed are identical
notwithstanding the restriction in applicant’s description
of services to “non-luxury condominium residential units”
and the limitation in the registration’s description of
services to “luxury high-rise and mid-rise residences.”
“Condominium residential units” can include “high-rise and
mid-rise residences.” As noted, there is no clear
distinction in this record as to what constitutes “luxury”
versus “non-luxury.” The condominium developments of
Serial No. 76594445
8
applicant and registrant appear to include many of the same
amenities, and applicant advertises its properties as
providing “luxury living.” To the extent that there is a
distinction between luxury and non-luxury residential
properties, consumers may still be exposed to both marks
and mistakenly believe there is a connection as to source
(e.g., the same company uses the two marks to designate
their two lines of luxury and non-luxury properties).5 In
view of the foregoing, we find that the services identified
in the application and the registration are substantially
similar.

2. Applicant’s and registrant’s services move in the same
channels of trade and are offered to the same class of
consumers.

Channels of trade mean how and to whom the services
are rendered. In this regard, applicant argues that “Real
estate is, by definition, a local enterprise.” The thrust
of applicant’s argument is presumably that because
registrant’s services are rendered in connection with a
development located in Pompano Beach, Florida, and
applicant’s services are intended to be used in connection

5 The Twin Cities Loft & Condo Living Tour website noted above
advertises a wide variety of condominium developments in one
listing thereby exposing potential consumers to both luxury and
non-luxury units.

Serial No. 76594445
9
with a development in Minneapolis, Minnesota, the same
consumers will not encounter both marks. However, since
neither the registration, nor the application, is
geographically restricted, the marks are both national in
scope. Section 7(c) of the Lanham Act, 15 U.S.C. §1057
(c).6 See also, Nark, Inc. v. Noah’s, Inc., 212 USPQ 934,
943-94 (TTAB 1981) (registration on the principal register
normally provides nationwide protection for the registered
mark regardless of geographic area in which the registrant
actually uses the mark). That is, the registrant is free
to use its mark anywhere in the United States, and not just
in a particular locality in Florida. Similarly, if
applicant were to obtain a registration, its rights to use
the mark would extend throughout the United States,
including the state of Florida. Accordingly, in analyzing
the channels of trade factor, we consider the real estate
services at issue to be national in scope.
Applicant also asserts that there is no evidence, nor
any rational basis, for a consumer familiar with
registrant’s luxury condominium in Pompano Beach, Florida,

6 Section 7(c) of the Lanham Act provides the following:
“Contingent upon the registration of the mark on the principal
register provided by this Act, the filing of the application to
register such mark shall constitute constructive use of the mark,
conferring a right of priority, nationwide in effect, on or in
connection with the goods or services specified in the
registration against any other person.” (Emphasis added).
Serial No. 76594445
10
to associate it with a non-luxury condominium in
Minneapolis, Minnesota. As previously noted, there is not
a clear distinction between what would constitute a luxury
condominium and what applicant characterizes as its “non-
luxury” condominium. In any event, the application and
registration at issue do not identify the condominium
developments by their geographical location. To the
contrary, the marks identify and distinguish substantially
similar real estate services. Thus, even if we were to
suppose that the registrant’s services were limited to the
development in Florida and applicant’s services were
limited to the development in Minnesota, consumers are
likely to believe that the Minneapolis development is
“managed” by the same source that is managing the Pompano
Beach development, or that it is another project of the
Florida real estate developer.
The only evidence in the record regarding how and to
whom the applicant and registrant render their real estate
services is the Twin Cities Loft & Condo Living Tour
website, which lists condominium developments available in
the Minneapolis/St. Paul metropolitan area, as well as the
developers involved with those projects. In that regard,
“luxury” and “non-luxury” projects are promoted together.
Accordingly, the evidence shows that the applicant’s
Serial No. 76594445
11
services and the registrant’s services move in the same
channels of trade and are advertised to and rendered to the
same class of purchasers.

3. SKYFLATS is similar to SKY HOMES.

With respect to the marks, we must determine whether
applicant’s mark and registrant’s mark, when compared in
their entireties, are similar or dissimilar in terms of
sound, appearance, connotation and commercial impression.
In re E.I. du Pont de Nemours & Co., supra. While marks
must be compared in their entireties, it is not improper to
accord more or less weight to a particular feature of a
mark. In re National Data Corp., 753 F.2d 1056, 24 UPSQ2d
749, 751 (Fed. Cir. 1983). That a particular feature of a
mark is descriptive with respect to the services at issue
justifies giving less weight to that portion of the mark.
Id. Furthermore, the test is not whether the marks can be
distinguished when subjected to a side-by-side comparison,
but rather whether the marks are sufficiently similar in
terms of their commercial impression that confusion as to
source of the services offered under the respective marks
is likely to result. The focus is on the recollection of
the average purchaser, who normally retains a general
rather than a specific impression of trademarks. See
Serial No. 76594445
12
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108
(TTAB 1975); Winnebago Industries, Inc. v. Oliver &
Winston, Inc., 207 USPQ 335, 344 (TTAB 1980). Finally, as
our primary reviewing court, the Court of Appeals for the
Federal Circuit, has observed, “[w]hen marks would appear
on virtually identical goods or services, the degree of
similarity necessary to support a conclusion of likely
confusion declines.” Century 21 Real Estate Corp. v.
Century Life of America, 970 F.2d 874, 23 USPQ2d 1698, 1700
(Fed. Cir. 1992). See also, Quadrex Corp. v. Infinicon
Leybold-Heraeus, Inc., 228 USPQ 300, 303 (TTAB 1985)(“the
degree of similarity is inversely proportional to the
degree of similarity in the marks”).
In our opinion, the similarity between SKYFLATS and
SKY HOMES is sufficient to cause purchasers and prospective
purchasers who encounter the marks on such closely related
services to mistakenly believe that these services emanate
from the same source. Both marks start with the word “Sky”
followed by the descriptive word “Flats” or “Homes.”7
Because the words “Flats” and “Homes” are descriptive, they

7 “The word ‘Flat’ means ‘an apartment or suite of rooms on one
floor.’ (Random House College Dictionary 502 (Revised ed.
1984)). Therefore, Applicant’s mark, SKYFLATS, specifically
refers to one level apartments or condominiums. The registered
mark, SKY HOMES, means any place of residence (Random House
College Dictionary 633 (Revised ed. 1984), which includes multi-
level residences.” (Applicant’s June 29, 2005 Response).
Serial No. 76594445
13
have less trademark significance and are less likely to
make an impression with consumers. Thus it is the word
“Sky,” which is common to both marks, which must be given
greater weight in our likelihood of confusion analysis.
The dominance of the word “Sky” in both applicant’s
and registrant’s marks is reinforced by its location as the
first word in the mark. The Board has previously found a
likelihood of confusion in the case of marks with identical
initial terms and different suffixes. Presto Products Inc.
v. Nice-Pak Products Inc., 9 USPQ2d 1895, 1897 (TTAB 1988)
(KIDWIPES is similar to KID STUFF}. See also, Century 21
Real Estate Corp. v. Century Life of America, supra (upon
encountering each mark (CENTURY 21 and CENTURY LIFE OF
AMERICA), consumers will notice the identical lead word
first).
Applicant argues, in essence, that the added features,
“Flats” and “Homes,” carry enough of an impact to
distinguish the marks when they are compared in their
entireties. Applicant’s argument is not well taken because
the words “Flats” and “Homes” describe the services and,
therefore, consumers will look to “Sky” as the source-
indicating word in both marks. Super Valu Stores Inc. v.
Exxon Corp., 11 USPQ2d 1539, 1542 (TTAB 1989)(TIGER MART
for retail convenience stores is likely to cause confusion
Serial No. 76594445
14
with TIGER DISCOUNTER for retail food store services). The
marks SKYFLATS and SKY HOMES, used in connection with real
estate brokerage services and the sale and operation of
condominiums, create the same commercial impression (i.e.,
an apartment with a sky-high or panoramic view).
(Applicant’s Brief, p. 8).
Moreover, even those purchasers who are fully aware of
the specific differences between the marks may well
believe, because of the common “Sky” element, that the two
marks are simply variants of one another, used by a single
source to identify and to distinguish its luxury and non-
luxury condominium developments.
As to the third-party registrations of marks which
include the word “Sky” as an element, suffice it to say
that the mere fact that others have registered marks
containing the word “Sky” cannot preclude a holding that
the particular marks in this case are similar. Winnebago
Industries, Inc. v. Oliver & Winston, Inc., supra. The
limited number of registrations submitted by applicant, and
the different commercial impressions created by some of
those marks (e.g., “Skyline” and “Skybox” are recognized
terms that mean the outline of buildings or mountains
against the horizon and reserved seating in a stadium or
arena), are not sufficient to show that the word “Sky” has
Serial No. 76594445
15
a common significance in the real estate field that would
entitle the SKY HOMES registration to such a limited scope
of protection that SKYFLATS could be registered for
identical or closely related services.
In view of the foregoing, including the descriptive
nature of the words “Flats” and “Homes,” we find that the
marks are similar in terms of appearance, pronunciation,
meaning, and commercial impression.

4. Despite the fact that consumers will exercise a high
degree of care before making a purchase, pre-sale
confusion is still likely.

Applicant argues that because buying or selling a
condominium is such an expensive transaction, perhaps the
most significant commercial transaction undertaken by many
people, “real estate buyers will be even more careful in
selecting a seller before spending hundreds of thousands of
dollars on a condominium they will live in for many years.”
Even if a potential consumer makes an association between
the services, “reasonable consumers will inquire or
investigate any assumed association before making such a
major purchase.”
Assuming that potential consumers of condominiums
exercise a high degree of care in purchasing real estate,
events prior to the sale are also relevant in determining
Serial No. 76594445
16
likelihood of confusion. That is to say, initial-interest
or pre-sale confusion may occur if a potential consumer is
initially confused between the applicant’s mark and the
registrant’s mark. That is certainly the situation here,
where the marks are similar and they are used in connection
with substantially the same or closely related services.
HRL Associates, Inc. v. Weiss Associates, Inc., 12 USPQ2d
1819, 1823 (TTAB 1989). Accordingly, while the factor of
purchaser care favors applicant, it is not enough to
overcome the likelihood that consumers will mistakenly
believe, at least initially, that the services emanate from
the same source.
We accordingly find that applicant’s mark SKYFLATS, if
used in connection with “real estate services, namely,
listing, leasing, brokerage, sales and operations of non-
luxury condominium residential units,” so closely resembles
the registered mark SKY HOMES for “real estate management
services and real estate brokerage services, namely,
operation and sale of luxury high-rise and mid-rise
residences” as to be likely to cause confusion, to cause
mistake, or to deceive.
Decision: The refusal to register is affirmed.