Bestreich Realty Group, LLC

Trademark Trial and Appeal Board

Jan 14, 2022

90053844 (T.T.A.B. Jan. 14, 2022)

This Opinion is Not a Precedent of the TTAB Mailed: January 14, 2022 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Bestreich Realty Group, LLC _____ Serial No. 90053844 _____ Gene S. Winter of St. Onge Steward Johnston & Reens LLC, for Bestreich Realty Group, LLC. Eleana Kravtsoff,1 Trademark Examining Attorney, Law Office 113, Myriah Habeeb, Managing Attorney. _____ Before Zervas, Lynch, and Lebow, Administrative Trademark Judges. Opinion by Lynch, Administrative Trademark Judge: I. Background Bestreich Realty Group, LLC (“Applicant”) seeks registration on the Principal Register of the mark IPRG in standard characters for: 1 During prosecution, the assigned examining attorney was Alison Keeley, but the application was reassigned at the appeal stage. References to “the Examining Attorney” are to the assigned attorney at the relevant time. Serial No. 90053844 - 2 - Real estate brokerage services; real estate sales services, namely, commercial real estate investment sales brokerage and advisory firm services in the field of real estate investment specializing in the sale of multifamily, mixed- use, and development site properties; real estate investment services; all of the foregoing excluding real estate management services and rental property management for apartments and providing a website for secure financial transactions, namely, for tenants to pay rent, in International Class 36.2 The Examining Attorney refused registration under Trademark Act Section 2(d), 15 U.S.C. § 1052(d), based on a likelihood of confusion with the prior registered mark PRG REAL ESTATE in standard characters, with REAL ESTATE disclaimed, for “Real estate management services; real estate service, namely, rental property management for apartments; providing a website for secure financial transactions, namely, for tenants to pay rent,” in International Class 36.3 After the Examining Attorney made the refusal final, Applicant filed a request for reconsideration and appealed. The Examining Attorney denied the request for reconsideration, maintaining the likelihood of confusion refusal. The appeal then proceeded, and Applicant and the Examining Attorney filed briefs. As explained below, we affirm the refusal to register. II. Likelihood of Confusion Our determination under Section 2(d) involves an analysis of all of the probative evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours 2 Application Serial No. 90053844 was filed July 15, 2020, under Section 1(b) of the Trademark Act, 15 U.S.C. § 1051(b). 3 Registration No. 4879863 issued January 22, 2015, and has been maintained. Serial No. 90053844 - 3 - & Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be considered, referred to as “DuPont factors”); see also In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). The Board considers only those DuPont factors for which there is evidence and argument. In re Guild Mortg. Co., 912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). “Not all DuPont factors are relevant in each case, and the weight afforded to each factor depends on the circumstances.” Stratus Networks, Inc. v. UBTA-UBET Commc’uns Inc., 955 F.3d 994, 2020 USPQ2d 10341, *3 (Fed. Cir. 2020). Two key considerations are the similarities between the marks and the relatedness of the services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (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.”). A. Alleged Lack of Fame of the Prior Registered Mark We first briefly address and reject Applicant’s argument challenging the “fame” of the cited mark. Applicant offers no evidence of a lack of fame, instead resting its challenge on its contention that the degree of fame can be inferred from Registrant’s website,4 an improper attempt to limit the scope of services in the cited registration. The argument is unconvincing, and such a “collateral attack on the validity of the 4 6 TTABVUE 14 (Applicant’s Brief) (Applicant states that “Registrant provides its property management services to its own rental communities”). Serial No. 90053844 - 4 - registration” is impermissible, regardless. See In re Dixie Rests., Inc., 105 F.3d 1405, 41 USPQ2d 1531, 1535 (Fed. Cir. 1997). In an ex parte appeal, the owner of the cited registration is not a party, and the Examining Attorney is under no obligation to demonstrate exposure to or recognition of the cited mark in the marketplace. In re Integrated Embedded, 120 USPQ2d 1504, 1512 (TTAB 2016). For that reason, “in an ex parte analysis of the DuPont factors for determining likelihood of confusion ..., the ‘fame of the mark’ [fifth] factor is normally treated as neutral when no evidence as to fame has been provided.” TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1207.01(d)(ix) (2021); see also cases cited therein. Thus, because there is no evidence of record regarding the fame of the cited mark, the fifth DuPont factor is neutral, and we accord the cited mark the ordinary scope of protection. B. Similarity of the Marks We compare the marks “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 (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, LLC, 126 USPQ2d 1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (citing In re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)). We assess not whether the marks can be distinguished in a side-by-side comparison, but rather whether their overall commercial impressions are similar enough that confusion as to the source of the services offered under the respective marks is likely to result. Coach Servs. v. Serial No. 90053844 - 5 - Triumph Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We compare Applicant’s mark, IPRG, to the cited mark, PRG REAL ESTATE, and find them similar in appearance, sound and commercial impression. The only term in Applicant’s mark consists of four letters, three of which are identical to and in the same order as the first and only distinctive term in the cited mark. “It is not improper for the Board to determine that, for rational reasons, it should give more or less weight to a particular feature of the mark provided that its ultimate conclusion regarding the likelihood of confusion rests on a consideration of the marks in their entireties.” QuikTrip West, Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 2021 USPQ2d 35 at **5-6 (Fed. Cir. 2021) (cleaned up). The placement of PRG at the beginning of the cited mark makes it prominent. In re Detroit Ath. Co., 903 F.3d 1297, 128 USPQ2d 1047, 1049 (Fed. Cir. 2018) (finding “[t]he identity of the marks’ two initial words is particularly significant because consumers typically notice those words first”); Presto Prods., Inc. v. Nice-Pak Prods., Inc., 9 USPQ2d 1895, 1897 (TTAB 1988) (first part of a mark “is most likely to be impressed upon the mind of a purchaser and remembered.”). PRG also dominates the cited mark because the other wording in the mark, REAL ESTATE, is descriptive of the real estate-related services recited in the cited registration, and has been disclaimed. This reduces its significance in the likelihood of confusion analysis because consumers would view it merely as referring to the nature of the services, and would not rely on the wording to indicate source. See Dixie Rests., 41 USPQ2d at Serial No. 90053844 - 6 - 1533-34. So while the additional descriptive wording in the cited mark creates some difference from Applicant’s mark in appearance and sound, we find the marks overall much more similar than dissimilar, particularly because we must consider the marks “‘in light of the fallibility of memory.’” See 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)). As to meaning and impression, Applicant’s IPRG and the PRG component of the cited mark are initialisms, with the PRG initialism in the cited mark preceded by the letter I in Applicant’s mark. The negative dictionary results in the record reflect that neither IPRG nor PRG has an ordinary meaning in the English language.5 The Examining Attorney contends that the letter I at the beginning of Applicant’s mark would be perceived as the abbreviation of “Internet-based,” a common prefix used in connection with online services. She supplied a Wiktionary entry showing that “i” is a prefix “[a]lluding to the Internet.”6 Applicant, on the other hand, without pointing to supporting evidence, maintains that the letter I stands for “investment,” and this meaning serves as a point of distinction from the cited mark. While the Examining Attorney, unlike Applicant, at least provided evidence in support of her position that “i” is a recognized prefix, because Applicant’s recited services on their face are not focused on the Internet, we are not convinced that consumers would view the I as a prefix denoting the Internet. As to Applicant’s claim, 5 TSDR March 11, 2021 Office Action at 39-40 (lexico.com). 6 TSDR March 11, 2021 Office Action at 46 (en.wiktionary.org). Serial No. 90053844 - 7 - without any other indicia in the mark and without proof that the letter I is a recognized abbreviation of “investment,” we are not convinced by Applicant’s contention either. Rather, like the cited mark, we find Applicant’s mark standing alone presents as an initialism without any apparent meaning or significance. We disagree with Applicant that the inclusion of I at the beginning of PNG suffices as a distinguishing feature, particularly given the fallibility of consumers’ memories. The Board has often found that terms differing by only a single letter are confusingly similar, and we find that to be the case here. See Apple Comput. v. TVNET.net Inc., 90 USPQ2d 1393, 1396 (TTAB 2007) (VTUNES.NET vs. ITUNES); Interlego AG v. Abrams/Gentile Entm’t Inc., 63 USPQ2d 1862, 1863 (TTAB 2002) (“Obviously, the marks LEGO and MEGO are extremely similar in that they differ simply by one letter.”). As noted above, the cited mark’s additional phrase REAL ESTATE names the field of services, and this highly descriptive or generic wording does not substantively distinguish the marks either. It does not change the meaning or impression of PRG; it merely describes the services. Therefore, the impression of the cited mark rests mostly on PRG. The marks as a whole remain similar in that neither has a meaning and they share a similar commercial impression. In this case, with the non-dominant feature of the cited mark (i.e., REAL ESTATE) appropriately discounted, In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1946-47 (Fed. Cir. 2004), where Applicant’s mark encompasses the entirety of the dominant feature of the cited mark, adding only a single letter at the beginning, we Serial No. 90053844 - 8 - find that the marks convey a similar appearance, sound, and commercial impression. Given their overall resemblance, we find Applicant’s mark and the cited mark similar. Thus, the first DuPont factor favors a finding of likelihood of confusion. C. The Services, Trade Channels and Classes of Consumers The second and third DuPont factors address the relatedness of the services and the trade channels in which they travel. Under the second factor, “likelihood of confusion can be found ‘if the respective [services] are related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.’” Coach Servs., 101 USPQ2d at 1722 (internal citations omitted). In analyzing the relatedness of the services, we look to the identifications in the application and cited registration. See Detroit Ath. Co., 128 USPQ2d at 1051; Stone Lion Capital Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1162 (Fed. Cir. 2014); Octocom Sys., Inc. v. Houston Comput. Servs. Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990). It is sufficient to establish relatedness as to any one of the recited services in this single-class application. See Tuxedo Monopoly, Inc. v. General Mills Fun Grp, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981); In re i.am.symbolic, llc, 866 F.3d 1315, 116 USPQ2d 1406, 1409 (TTAB 2015). We compare the cited registration’s services that include “Real estate management services; real estate service, namely, rental property management for apartments” to Applicant’s “Real estate brokerage services; real estate sales services, namely, commercial real estate investment sales brokerage and advisory firm Serial No. 90053844 - 9 - services in the field of real estate investment specializing in the sale of multifamily, mixed-use, and development site properties; real estate investment services.” Applicant’s recitation explicitly excludes the services set out in the cited recitation. However, just because the services do not directly overlap does not settle the inquiry under this factor. “[G]oods and/or services do not have to be the same or even competitive in order to support a finding of likelihood of confusion. It is quite enough if the goods and/or services with which the marks are used are related in some manner such that they would be seen by the same individuals under circumstances which would cause them to believe, albeit mistakenly, that they emanate from the same source.” In re Peebles Inc., 23 USPQ2d 1795, 1796 (TTAB 1992); see also In re Martin’s Famous Pastry Shoppe, Inc., 748 F2d 1565, 223 USPQ 1289, 1290 (Fed. Cir. 1984) (bread and cheese found to be related because they are complementary products). The Examining Attorney submitted a variety of evidence demonstrating the relatedness of these services. First, she provided evidence of third-parties offering under the same mark services such as Applicant’s and services in the cited registration, including the following examples: The Banks Property Management and Sales website promotes under that mark both its property management services and its “two full time Real Estate Brokers.”7 The BCL Properties LLC website states that “in addition to property management we are a full service brokerage firm. Property sales allow BCL Properties to help our 7 TSDR March 11, 2021 Office Action at 47 (bankspropertymanagement.com). Serial No. 90053844 - 10 - current clients with the sale of their investment property, and [/] or purchase new property.”8 The Colliers website promotes “Colliers’ Real Estate Management Services” along with a variety of “investment Services” by “Colliers advisor[s]” who “have deep knowledge and experience across a variety of niche commercial property types,” such as “Affordable Housing,” “Seniors Housing” and “Student Housing.”9 The Nomadic Real Estate website promotes both property management and real estate brokerage services.10 Under the BLACKWOOD mark, the Blackwood Companies website promotes both its “Commercial Real Estate Broker” services as well as its “professional property management” services for commercial properties.11 The Quasar Property Management and Real Estate website states that “Quasar Property Management and Real Estate provides the best in real estate services, from sales and leasing to the management of both residential and commercial properties and more,” and also advertises “Investment Opportunities,” noting that as part of these services, Quasar provides investment analysis, financing, and property management.12 The ARMI Property Management Specialists website promotes both property management and real estate brokerage services under the ARMI mark.13 The evidence shows that these types of services are promoted and offered together by entities that broker and sell real estate, in addition to managing property. This 8 TSDR March 11, 2021 Office Action at 49-53 (bclmgt.com). 9 TSDR March 11, 2021 Office Action at 54-61 (colliers.com). 10 TSDR March 11, 2021 Office Action at 62-67 (nomadicrealestate.com). 11 TSDR March 11, 2021 Office Action at 68-75 (blackwoodcompanies.com). 12 TSDR March 11, 2021 Office Action at 76-81 (quasarrealestate.com). 13 TSDR March 11, 2021 Office Action at 82-84 (armiva.com). Serial No. 90053844 - 11 - evidence supports the relatedness of the services in the application and cited registration by showing that consumers are accustomed to encountering them offered under the same mark. See Detroit Ath. Co., 128 USPQ2d at 1050 (crediting relatedness evidence that third parties use the same mark for the goods and services at issue because “[t]his evidence suggests that consumers are accustomed to seeing a single mark associated with a source that sells both”); Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) (stating that evidence that “a single company sells the goods and services of both parties, if presented, is relevant to a relatedness analysis”). Second, the Examining Attorney further supported the relatedness of the services by introducing ten use-based, third-party registrations showing that the same entity has registered a single mark identifying both Applicant’s and Registrant’s services.14 L’Oreal S.A. v. Marcon, 102 USPQ2d 1434, 1140 (TTAB 2012); In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993); In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d (unpublished) No. 88-1444, 864 F.2d 149 (Fed. Cir. Nov. 14, 1988). We find the evidence of third-party use and registration of the same marks for services such as Applicant’s and services such as Registrant’s quite persuasive to establish their relatedness. Although Applicant emphasizes that real estate investment and property management services differ, we reiterate that the analysis under this factor is not whether the services overlap. The record reflects that the 14 TSDR March 11, 2021 Office Action at 2-31. Serial No. 90053844 - 12 - marketing of both Applicant’s and Registrant’s services under similar marks could lead consumers to the mistaken notion that they come from the same source. Coach Servs., 101 USPQ2d at 1722. We also reject Applicant’s efforts to limit the scope of the recitations of services based on Applicant’s contentions about the nature of its and Registrant’s actual services in the marketplace. Any actual differences in the services that are not reflected in the identifications cannot be considered.15 “The authority is legion that the question of registrability of an applicant’s mark must be decided on the basis of the identification of goods [or services] set forth in the application regardless of what the record may reveal as to the particular nature of an applicant’s [or registrant’s services or] goods, the particular channels of trade or the class of purchasers to which sales of the goods [or services] are directed.” Octocom Syst., 16 USPQ2d at 1787. We further decline to accept Applicant’s suggestion that we interpret the services in the cited registration based on earlier versions of the identification of services from the registration’s file history,16 not only because the final recitation controls,17 but also because the file history of the cited registration is not of record in this appeal. In 15 To the extent Applicant refers to allegedly distinct geographic areas of operation, “[g]iven that registrant’s registrations encompass nationwide rights, and that applicant is seeking a geographically unrestricted registration, applicant’s argument is unavailing.” In re Infinity Broadcasting Corp. of Dallas, 60 USPQ2d 1214, 1218 (TTAB 2001). See also In re Integrity Mutual Insurance Co., 216 USPQ 895, 896 (TTAB 1982) (“Inasmuch as applicant is seeking a geographically unrestricted registration, the Board is constrained to evaluate similarities in terms of potentially nationwide markets”). 16 6 TTABVUE 8-9 (Applicant’s Brief). 17 As an aside, if we were to compare the original identifications, Applicant’s initial application broadly recited “real estate services.” TSDR July 15, 2020 Application. Serial No. 90053844 - 13 - an ex parte appeal, while the prosecution file history of the involved application is automatically of record, the same does not hold true for the file history of the cited registration. In re Sela Prods. LLC, 107 USPQ2d 1580, 1583 (TTAB 2013) (“there is no equivalent rule for ex parte proceedings that makes the file of a cited registration of record”). Rather, for the prosecution file history of a cited registration or a portion thereof to be considered, it must be timely introduced as evidence. Id. Turning to the trade channels, the third-party website evidence discussed above establishes that services such as Applicant’s and Registrant’s travel in some of the same channels of trade to the same classes of consumers. Again, contrary to Applicant’s arguments based on extrinsic evidence of supposed actual trade channels based only on Registrant’s website, we rely on the unrestricted recitations. Octocom Sys., 16 USPQ2d at 1787; see also In re Midwest Gaming & Entm’t LLC, 106 USPQ2d 1163, 1165 (TTAB 2013) (“An applicant may not restrict the scope of the goods covered in the cited registration by argument or extrinsic evidence”) (quoting In re La Peregrina Ltd., 86 USPQ2d 1645, 1647 (TTAB 2008). Thus, the second and third DuPont factors also weigh in favor of likely confusion. D. Conditions under Which and Buyers to Whom Sales Are Made The fourth DuPont factor involves “[t]he conditions under which and buyers to whom sales are made, i.e., impulse vs. careful, sophisticated purchasing.” DuPont, 177 USPQ at 567. In assessing this factor, the Board must consider all potential customers of the services identified, including the least sophisticated ordinary Serial No. 90053844 - 14 - consumers. Stone Lion, 110 USPQ2d at 1163. Customer care and sophistication tend to render confusion less likely. See Palm Bay, 73 USPQ2d at 1695. Applicant argues under this factor, without any supporting evidence, that “[r]eal estate transactions and contractual management services are at completely different price points,” and “purchases of Applicant’s capital investment services are made with careful deliberation and are not impulsive purchases.”18 However, Applicant’s argument omits mention of the inclusion in its recitation of “real estate brokerage services,” which is unrestricted and must be construed to include all types of such services, including brokers who assist ordinary members of the general public buying or selling any type of real estate. See S.W. Mgmt., Inc. v. Ocinomled, Ltd., 115 USPQ2d 1007, 1025 (TTAB 2015) (where the goods in an application or registration are broadly described, they are deemed to encompass all the goods of the nature and type described therein); In re Hughes Furniture Indus., Inc., 114 USPQ2d 1134, 1137 (TTAB 2015) (“Applicant’s broadly worded identification of ‘furniture’ necessarily encompasses Registrant’s narrowly identified ‘residential and commercial furniture.’”). While the selection of a real estate broker might not be done on impulse, Applicant has not demonstrated that a notably higher degree of care would be associated with the purchasing of these services than they would for other types of services. In fact, Applicant points to no evidence under this factor. Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797, 1799 (Fed. Cir. 2018) (“Attorney argument is no substitute for evidence.”) (quoting Enzo Biochem, Inc. v. Gen-Probe 18 6 TTABVUE 9-10 (Applicant’s Brief). Serial No. 90053844 - 15 - Inc., 424 F.3d 1276, 76 USPQ2d 1616, 1622 (Fed. Cir. 2005)). Thus, we treat this factor as neutral. III. Conclusion The similarity of the marks for related services that move in some of the same channels of trade to the same classes of customers renders confusion likely. Decision: The refusal to register Applicant’s mark is affirmed.