Centex Corporationv.Citihomes Realty Corporation

Trademark Trial and Appeal Board

Aug 22, 2008

No. 91161887 (T.T.A.B. Aug. 22, 2008)

Mailed:
August 22, 2008
Bucher

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

Centex Corporation
v.
Citihomes Realty Corporation
________

Opposition No. 91161887
against Serial No. 75900317

_______

Molly Buck Richard of Richard Law Group, Inc. for Centex
Corporation.

F. Robert Slotkin of Slotkin Law Firm, P.C. for Citihomes
Realty Corporation.
_______

Before Walters, Bucher and Zervas, Administrative Trademark
Judges.
Opinion by Bucher, Administrative Trademark Judge:
Citihomes Realty Corporation seeks registration on the
Principal Register of the mark CITIHOMES (in standard
character format) for services recited in the application, as
amended, as follows:
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition No. 91161887
- 2 -
“real estate brokerage services,
namely, assisting in the purchase and
sale of real property; providing a
database of real estate information,
namely, real estate listing
information; providing a directory of
real estate agents” in International
Class 36.1
Centex Corporation has opposed this application on the
ground of priority of use and likelihood of confusion,
alleging that applicant’s mark, when used in connection with
the recited services, so resembles its marks, shown below,
as to be likely to cause confusion, to cause mistake or to
deceive, under Section 2(d) of the Lanham Act, 15 U.S.C.
§ 1052(d). Opposer also alleges common law use of the first
two registered marks shown below since at least May 1998 in
connection with the marketing and sale of residential real

1 Application Serial No. 75900317 was filed pro se by Gil
Henderson, “General Manager,” on January 18, 2000, erroneously
based upon applicant’s allegation of a bona fide intention to use
the mark in commerce (under Section 1(b) of the Act) as well as
an allegation of use anywhere since at least as early as June 10,
1998 and use in commerce since at least as early as July 10, 1998
(under Section 1(a) of the Act). The electronic records of the
United States Patent and Trademark Office show this application
as an application based upon use in commerce, and we have treated
it in that fashion. In April 2004, applicant submitted a claim
of acquired distinctiveness under Section 2(f) of the Act. The
original named applicant is now deceased. In an assignment
executed on April 1, 2005, one Ms. Kathleen M. Henderson –
presumably Mr. Gil Henderson’s widow – assigned this application
to her son, Mr. John Henderson (Reel 3066 / Frame 0420), who then
assigned the application to Citihomes Realty Corporation, the
named defendant, in an assignment dated April 26, 2005 (recorded
at Reel 3080 / Frame 0104).

Opposition No. 91161887
- 3 -
estate through affiliated real estate agents; and ownership
of the following registrations:
2
CITYHOMES 3
CITYHOMES
OF AMERICA 4
5
each for “construction
services, namely
planning, laying out
and custom construction
of residential
communities; real
estate development; and
custom construction of
homes” in
International Class
37,

Applicant, in its answer, denied all the salient
allegations of these claims.

2 Registration No. 2486473 issued to Centex Homes on September
11, 2001; Section 8 affidavit (six-year) accepted and Section 15
affidavit acknowledged. Registrant has claimed acquired
distinctiveness as to the word “CityHomes.” The underlying
application was filed by City Homebuilders, Inc. (CHI),
registered in the name of assignee, Centex Homes (Reel 2267 /
Frame 0174) and was subsequently assigned to Centex Corporation
(Reel 2407 / Frame 0381), opposer herein.

3 Registration No. 2513656 issued to City Homebuilders, Inc.
(CHI) on December 4, 2001, with later recordations of assignments
leading to the current opposer through Centex Homes (Reel 2267 /
Frame 0174), and finally to Centex Corporation (Reel 2407 / Frame
0381), opposer herein. This mark issued under Section 2(f) of
the Act; Section 8 affidavit (six-year) accepted and Section 15
affidavit acknowledged.

4 Registration No. 2683912 issued to Centex Homes on February
4, 2003, and was later assigned to opposer herein in a transfer
recorded at Reel 2407 / Frame 0381. Registrant has claimed
acquired distinctiveness as to the word “CityHomes,” but makes no
claim to the words “Of America” apart from the mark as shown.

5 Registration No. 3370343 issued to Centex Corporation on
January 15, 2008. Registrant has claimed acquired
distinctiveness as to the word “CityHomes.” Applicant makes no
claim to the word “Company” apart from the mark as shown.
Opposition No. 91161887
- 4 -
I. THE RECORD
By operation of Trademark Rule 2.122, 37 CFR § 2.122,
the record includes the pleadings and the file of the
involved application.
The record also includes the following testimony and
evidence:
A. Opposer’s Evidence

1. The testimony deposition of opposer’s witness, Eric J.
Zimmerman, purchasing and estimating manager for
Centex Homes, Dallas, and opposer’s and applicant’s
exhibits referenced therein;
2. Opposer’s Notice of Reliance filed September 13, 2007
making of record certified copies of three of
opposer’s registered marks; and
3. Opposer’s Notice of Reliance filed October 1, 2007
making of record printed publications relating to
opposer’s use of the CITYHOMES mark.
B. Applicant’s Evidence:

The testimony deposition of applicant’s witness, John
Gilbert Henderson, President of Citihomes Realty
Corporation (see also footnote 1), and opposer’s and
applicant’s exhibits referenced therein.
Opposition No. 91161887
- 5 -
II. FACTUAL FINDINGS
The record establishes all of the following facts in
this case.
Centex is a Dallas-based, home-building company founded
more than fifty years ago. However, according to the
testimony of Mr. Zimmerman, the predecessor-in-interest to
opposer’s CITYHOMES unit began business retrofitting
existing apartments and condominiums in Dallas in the mid-
1990’s. Zimmerman deposition at 8. Centex acquired City
Homebuilders, Inc. (CHI) and the CityHomes marks in 2001.
Id. at 7, also Opposer’s Exhibit 15, The Dallas Morning News
dated January 12, 2001. Currently, opposer’s CITYHOMES
unit builds new multifamily, attached townhouse and/or
condominium projects in infill or urban-type settings.
Zimmerman deposition at 9. The target buyers are single
professionals, dual income couples without children and
upscale, suburban empty-nesters who want to move into urban
townhouses and condominiums, primarily in the Dallas/ Fort
Worth area. Id. at 10, and opposer’s Exhibit 12. CityHomes
has received national recognition for its luxury homes,
including “Builder of the Year” by the National Association
Opposition No. 91161887
- 6 -
of Home Builders and the American Institute of Architects.6
While the majority of opposer’s CITYHOMES residential homes
have been built in the Dallas / Fort Worth area, opposer’s
CITYHOMES unit has also constructed multifamily, attached
townhouses and condominiums in Washington DC, in several
cities in New Jersey as well as in Houston, TX.7
Formed in 1998, applicant, Citihomes Realty
Corporation, is a real estate brokerage firm located in the
Atlanta (GA) metropolitan area. According to Mr. Henderson,
the target audience for applicant’s services includes real
estate agents and brokers. Applicant passes along leads it
gets online (e.g., through its pay-per-click advertising and
search engine optimization) to affiliated real estate
agents. Applicant offers turn-key real estate business
platforms (e.g., online tools such as personal websites,
networking tools, a virtual offices, programs for email
blasts, etc.) designed to help independent real estate
agents and franchisees use the latest technologies to
generate more business. In fact, applicant is a discount
e-homeseller that touts itself as “Atlanta’s #1 online

6 Id. at 23 – 25. The Dallas Morning News, “CityHomes brings
home NAHB awards,” April 16, 2000, opposer’s Exhibit 10.

7 Zimmerman deposition at 56 – 59, and Opposer’s Exhibit
38 : www.centexcityhomes.com and www.centexhomes.com.

Opposition No. 91161887
- 7 -
Realtor.” Applicant’s customers also include property
owners looking to list their properties for sale as well as
property buyers who need expertise in purchasing properties.
While applicant’s services include rental leases, the sale
of empty lots of undeveloped land, farms, historical
properties and commercial properties, more than 90% of
applicant’s services involve the resale of residential
properties. All the various websites that applicant made
part of the record show the CITIHOMES mark used prominently
therein. Applicant has not established use of its mark in
connection with its identified services prior to its filing
date, upon which we have relied for determining priority
vis-à-vis opposer’s established common law use of its marks.
III. ANALYSIS
A. Standing
Opposer’s standing is a threshold inquiry made by the
Board in every inter partes case. In Ritchie v. Simpson,
170 F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999), the Federal
Circuit has enunciated a liberal threshold for determining
standing, i.e., whether one’s belief that one will be (is)
damaged by the registration is reasonable and reflects a
real interest in the case. See also Jewelers Vigilance
Opposition No. 91161887
- 8 -
Committee Inc. v. Ullenberg Corp., 823 F.2d 490, 2 USPQ2d
2021, 2023 (Fed. Cir. 1987); and Lipton Industries, Inc. v.
Ralston Purina Company, 670 F.2d 1024, 213 USPQ 185 (CCPA
1982). Opposer has submitted evidence of its ownership of
its various CITYHOMES registrations, as well as proof of
its common law usage of the CITYHOMES mark. We consider
this evidence as sufficient to establish opposer’s interest
and, therefore, standing, in this proceeding.
B. Priority
Because opposer has established that it owns valid and
subsisting registrations of its pleaded marks, priority is
not an issue. See King Candy Company v. Eunice King’s
Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974); and
Carl Karcher Enterprises Inc. v. Stars Restaurants Corp.,
35 USPQ2d 1125 (TTAB 1995).
As to opposer’s common law use of its marks in
connection with the marketing and sale of residential real
estate through affiliated real estate agents, opposer has
demonstrated use at least as early as May 29, 1998:
Opposition No. 91161887
- 9 -
8
This May 1998 promotional flyer precedes applicant’s
filing date (January 18, 2000) or any other date on which
applicant can rely based on its testimony of record. In
light of this evidence, we award priority to opposer herein.

8 Zimmerman deposition at 15 - 16; Exhibit 3.
Opposition No. 91161887
- 10 -
C. Likelihood of Confusion
We turn, then, to the issue of likelihood of confusion
under Section 2(d) of the Trademark Act. Our determination
must be based upon our analysis of all of the probative
facts in evidence that are relevant to the factors bearing
on the issue of likelihood of confusion. See In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA
1973). See also In re Majestic Distilling Company, Inc.,
315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In
considering the evidence of record on these factors, we keep
in mind that “[t]he fundamental inquiry mandated by Section
2(d) goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” See Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). See also In re
Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed.
Cir. 1997).
The Marks
We turn first to examine the similarity or
dissimilarity of the parties’ marks in their entireties as
to appearance, sound, connotation and commercial impression.
See Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison
Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed.
Opposition No. 91161887
- 11 -
Cir. 2005). Opposer argues that the parties’ marks are
confusingly similar as to each of these criteria. By
contrast, applicant argues that none of the involved
services are transacted using spoken words, and that there
are visual differences in the marks despite the similarity
in spelling, creating different meanings and commercial
impressions.9
Under this du Pont factor, 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 overall commercial impressions
such that confusion as to the source of the goods offered
under the respective marks is a likely result. Sealed Air
Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975).
As to sound, while there is no correct pronunciation of
marks, opposer points out that the phonetic simulation is
perfect, and we agree that any variety in the pronunciations

9 Much of our discussion has focused on the mark shown in
Registration No. 2513656 for the standard format presentation of
opposer’s mark, CITYHOMES. This is not to suggest that we would
reach a different ultimate determination as to the other marks.
Applicant has questioned whether Centex, after the acquisition
of CityHomes, continued to use the logo
having the chimneyed house for the
letter “H” mark that is Registration No.
2486473. However, such an allegation
will not be heard in this proceeding
because it is essentially an attack on the validity of opposer’s
established registration, and applicant has not counterclaimed to
have this registration cancelled.

Opposition No. 91161887
- 12 -
of these marks is likely to be the same. Citibank, N.A. v.
The City Bank of San Francisco et al., 206 USPQ 997, 1005
(N.D. Cal. 1980) [CITIBANK is the phonic equivalent of CITY
BANK}. In testimony, applicant’s witness testified to only
a handful of unusual pronunciations of its CITIHOMES marks
over a ten year period of usage. Henderson deposition, at
92 – 94. Nonetheless, applicant argues that:
“ … there is no evidence that either Applicant’s
services or Opposer’s services are ever purchased
verbally. In fact, to do so would violate the
statute of frauds in most States, including
Georgia and Texas, which require that contracts
concerning interests in land be written.”

However, purchasers will often refer to marks verbally,
regardless of the significance of such verbalization to the
purchasing process and, therefore, the similarity or
dissimilarity in sound between the parties’ marks is but one
consideration in our likelihood of confusion analysis.
As to meaning, we find that despite the difference in
their fourth letters, both of these marks have the same
meaning and are likely to be perceived as connoting urban
homes.
As to appearance, the visual simulation of CITYHOMES
and CITIHOMES is quite close. We agree with opposer that
the slight difference of a single letter in the middle of
the respective marks is insufficient to distinguish the
Opposition No. 91161887
- 13 -
marks – especially when the marks are identical as to sound
and meaning. Black & Decker Corporation v. Emerson Electric
Co., 84 USPQ2d 1482, 1491 (TTAB, 2007) [the slight
difference in the spelling of HOG and HAWG is insufficient
to distinguish these marks]. Although applicant makes much
of opposer’s various design features, taglines and
particular lettering fonts, the mark in opposer’s
Registration No. 2513656 is CITYHOMES in standard character
format – as is applicant’s applied-for CITIHOMES mark.
Hence, we find the commercial impressions of these two marks
to be substantially similar.
Regarding opposer’s pleaded Registrations Nos. 2486473,
2683912 and 3370343, for marks including additional wording
and/or design elements, we find that in each case, the term
CITYHOMES is the dominant portion thereof. In Registration
No. 2486473, the design consists principally of the letter
“H” in “HOMES” appearing as the design of a chimneyed house,
which essentially reinforces the “HOMES” portion of the term
CITYHOMES. In Registration No. 2683912, the additional
terminology, “Of America” also refers the viewer back to the
primary term, CITYHOMES, and may indicate to a prospective
buyer that there are subsidiaries operating in other
countries. However, CITYHOMES remains the dominant portion
Opposition No. 91161887
- 14 -
of this mark as well. In Registration No. 3370343, the
additional wording, “a CENTEX company,” appears in much smaller
writing beneath a portion of the dominant term, CITYHOMES,
and, again, refers the viewer back to the primary term,
CITYHOMES.
Hence, in view of the substantial similarity in the
sound, sight, connotation and commercial impressions of the
involved marks, we find that applicant’s mark is confusingly
similar to opposer’s marks.
Relatedness of the services
In looking at the respective recitations of services,
opposer argues that these are related types of real estate
services that go hand-in-hand. For example, opposer argues
that applicant’s CITIHOMES real estate brokerage services
facilitate the marketing and sale of real estate – much like
the type of residential properties constructed by CITYHOMES /
Centex. Similarly, Centex’s CITYHOMES residential
developments are multi-unit urban condominium and townhome
developments, while applicant’s real estate listings clearly
include urban townhomes, lofts and condominiums.
By contrast, applicant argues that opposer’s recited
construction services have nothing to do with real estate
brokerage, agency or listing services. Applicant argues
Opposition No. 91161887
- 15 -
that “[r]eal estate services and construction industry
services have been held insufficiently similar to create a
likelihood of confusion.” Although applicant, in footnote 49
in its brief, at 15, included what purports to be
precedential support for the distance between these services
[American Optical Corp. v. American Olean Tile Company,
179 USPQ 253, 255-256 (TTAB 1973)], we find that this cited
case does not actually stand for the proposition as stated.10
We agree with applicant that “[s]ervices are ‘related’
not because they co-exist in the same broad industry but
are ‘related’ if the services are marketed and consumed such
that buyers are likely to believe that the services,
similarly marketed, come from the same source, or are somehow
connected with or sponsored by a common company.” See
Homeowners Group v. Home Marketing Specialists, 931 F.2d
1100, 1109, 18 USPQ2d 1587 (6th Cir. 1991). However,
opposer’s services are clearly not limited to construction
services. While the record before us does not establish a
relationship between the transactional services of a real
estate agent and construction services, some construction
entities, such as opposer, indeed, do offer real estate

10 The Board, in American Optical Corp., held that the fact
that plaintiff had offered a variety of services (including
construction and real estate services) was insufficient to
establish a commercial relationship with applicant’s ceramic
tiles.
Opposition No. 91161887
- 16 -
development services that include marketing and selling the
condominiums and townhouses that they construct.
As demonstrated in the record, opposer has used the
CITYHOMES mark since the mid-1990’s in connection with
the development and sale of residential real estate
properties. Given the nature of its profile in Dallas,
members of the public are likely to view CityHomes as, in
addition to being a builder, a real estate sales
organization. Throughout this record, real estate agents
make significant contributions to opposer’s business, and
there are repeated articles and advertisements prominently
featuring opposer’s sales and marketing center:
11

11 Zimmerman deposition at 20 – 24, 31; Opposer’s Exhibit 8,
The Dallas Morning News, “City Dwellers: Pair of builders
asserting dominance in close-in neighborhood,” February 19, 1999.
In this article about CityHomes’ “brand identity,” it mentions
Opposition No. 91161887
- 17 -
The evidence relevant to this du Pont factor shows
that the parties provide substantially similar services in the
marketing and sale of residential real estate, using the
same types of marketing for those services.
Channels of Trade
As noted above, we conclude that opposer’s
registrations, which include “real estate development”
services, encompass “marketing and sale services.” Such
services are clearly focused on potential home buyers.
Specifically, we note that applicant’s real estate
brokerage services include “assisting in the purchase and
sale of real property.” This portion of applicant’s
business is shown at applicant’s website directed to
potential home buyers, available at http://www.citihomes.com
(applicant’s Exhibit 9). Mr. Henderson testified about
applicant’s primary affiliated real estate agent, Ms. Mary
Beth Zoretic, and the record points to Ms. Zoretic’s
websites having the CitiHomes Realty Corporation logo
displayed prominently on all of them:
• Atlanta Condos: http://www.CitiHomesMetro.com/
Tag-line: “Finding a cool place intown just got
easier …”

the spring 1999 opening of 15,000 sq.ft. high-tech neighborhood
sales and marketing center in Knox Park area of Dallas, at the
corner of Cole and Fitzhugh Avenues; see also opposer’s Exhibits
16 and 17.
Opposition No. 91161887
- 18 -
• Atlanta Townhomes: www.AtlantaTownhomeAdvisor.com
Tag-line: “Turning your Dream Into a Home!”

• Atlanta Lofts: www.AtlantaLoftExpert.com
Tag-line: “Find the Coolest Place to Live”

• Atlanta Luxury Homes: www.AtlantaFineLiving.com
Tag-line: “Exceptional Real Estate. World Class
Service”12

The record also shows that applicant advertises in a
variety of magazines targeting different groups of ordinary
consumers who may be in the market for a condo, townhouse or
loft.13
Opposer has shown through evidence of its use of its
mark in the marketing and sale of residential real estate,
that it uses the same types of marketing for its real estate
development services. In fact, on this record, we find that
the ultimate customers of applicant’s recited services and
opposer’s demonstrated real estate development services
include all the same classes of purchasers: potential /
ultimate buyers of residential properties on the market for

12 In addition to applicant’s explicit claim to be “the Atlanta
Condo experts,” CitiHomes Realty Corporation’s promotion of
townhouses, lofts, condominiums and luxury homes belies
applicant’s claims in its brief to be “almost exclusively”
involved in the “sales of suburban and exurban single family,
detached homes.”

13 Applicant has advertised, inter alia, in DavidAtlanta
Magazine, The Gay and Lesbian Entertainment Magazine for
Atlanta, also available at http://www.davidatlanta.com/;
The Roswell Trader; and www.AtlantaNation.com. Henderson
deposition at 53, 104 – 105.

Opposition No. 91161887
- 19 -
an average of three-hundred thousand dollars. Even if we
were to conclude that opposer is currently involved in
selling only new homes and that applicant is involved only
in the resale of existing homes, we find that in the event
opposer were offering its services in the Atlanta
metropolitan area, for example,14 it would be in direct
competition with applicant,15 applicant’s protestations to
the contrary notwithstanding.16
Over the past decade, affiliated real estate agents or
brokers have been critical players in the marketing and sale
of residential real estate transactions, whether such
services have been offered by applicant or by opposer.
Moreover, both offer their respective services through the

14 While the record shows that opposer/Centex is active in the
Atlanta metropolitan area, so far it does not appear as if the
opposer’s CITYHOMES unit has established a presence there.

15 Opposer’s Exhibit 19: Information brochure from 1999;
Opposer’s Exhibits 20 and 21: Billboards from 1998 – 1999;
Opposer’s Exhibit 22 : CityHomes marketing brochure, 2000 –
2001; Opposer’s Exhibit 23 : Metroplex Living, special
advertising insert section of The Dallas Observer, June 2005;
opposer’s Exhibit 24 : CityHomes ad in The Dallas Voice
www.dallasvoice.com July 1, 2005; opposer’s Exhibits 25 and 26 :
May 2005, advertorials in the “New Homes” section of The Dallas
Morning News for CityHomes properties available for purchase;
opposer’s Exhibit 27 : New Homes Guide of April 2005, hundreds
of pages long having properties for sale in the Dallas / Fort
Worth area, having opposer’s advertisements on the front cover;
and opposer’s Exhibit 28: New Homes Guide of July 2005.

16 Henderson deposition at 116 – 120.

Opposition No. 91161887
- 20 -
same channels of trade, namely, through real estate agents,
over the Internet, using flyers and lawn signs:
17 18
With so many overlapping channels of trade, it is immaterial
to our determination that applicant may well not have used
its mark in trade channels used by opposer, “such as
television, newspaper, radio, billboards, or advertorials.”
Both opposer and applicant have focused a
disproportionate share of their evidence and argumentation
on the role of real estate professionals in their respective
businesses. Given our conclusions above regarding potential
home buyers, we do not find this deserves so much attention.

17 Opposer’s Exhibit 35 is pictures of curb-side signage at a
CITYHOMES project in September 2007.

18 Applicant’s Exhibit 12 is a photograph of CITIHOMES curb
signage.

Opposition No. 91161887
- 21 -
Certainly applicant’s business model focuses on real
estate agents as a second, distinct population of customers.
In fact, a very helpful flowchart contained in the record
clarifies the two faces of CITIHOMES:

19
While applicant’s recitation of services appears to be
directed to potential home buyers, the language of
“providing a database of real estate information, namely,
real estate listing information” could certainly encompass
services directed to real estate professionals. Affiliated,
independent real estate agents and brokers are the targeted
customers of applicant’s citihomes turn-key real estate
business platforms, available to experienced agents

19 BATES #CITI-0009.
Opposition No. 91161887
- 22 -
interested in establishing a franchise with applicant
(available at www.citihomes.biz or MyOffice.citihomes.com;
Henderson deposition at 46, 56). In this latter context,
applicant derives income from real estate professional
franchisees, or “Citihomes Associate[s].” These real estate
agents are indeed the ultimate customers of applicant’s
online business platform services.20
We agree with applicant that opposer is not offering
services directly to real estate agents as ultimate
customers. Unlike applicant, who derives income from real
estate agents, the real estate professionals that opposer
works with derive income from opposer in the form of real
estate commissions and bonuses. Nonetheless, applicant
argues that there is no evidence in this record supporting
opposer’s argument that real estate agents comprise an
important audience for its services. We disagree, noting,
inter alia, that opposer has made of record a large quantity

20 Of course, this particular franchise arrangement with real
estate agents seems critical to all of applicant’s “real estate
brokerage services” recited in the instant application.
Applicant is said to have recognized early-on the ways in which
the Internet was changing the role of real estate agents.
Applicant’s Exhibit 5 Applicant’s business model clearly relies
upon income from its franchisees. In spite of having only one
broker and three agents (Henderson deposition at 102 - 103),
applicant claims to being “Atlanta’s #1 online Realtor.”
Opposition No. 91161887
- 23 -
of evidence showing the significant role real estate agents
play in opposer’s real estate development services.21

21 Opposer’s Exhibit 1: Flyer marketing CITYHOMES project through
David Griffin & Co. Realtors / project is in the 4100 Block of
Travis/a 42 residence Development/May 1998 also at
http://www.dgriffin.com/
• Opposer’s Exhibit 2: Dallas Morning News real estate
classified article, January 11, 1999 “New CityHomes design
offered by David Griffin, vice president [of CityHomes?] and
listing agent.
• Opposer’s Exhibit 3: Flyer/handout for Realtors, brokers,
potential buyers, etc. about CityHomes luxury condominium
project on Cole Avenue (May 29, 1998)
• Opposer’s Exhibit 4: Happy hour party invitation for Travis
project in exhibits 1 and 2, handled by Joseph Gullotto, of
Ebby Halliday, REALTORS® (June 18, 1998)
• Opposer’s Exhibit 5: Advertisement of three different
CityHomes developments (e.g., The 5 7 9, 4125 Cole and Miro
Place), represented exclusively by Joseph Gullotto, of Ebby
Halliday, REALTORS® 1998 http://www.ebby.com/
• Opposer’s Exhibit 6: Another advertisement of three different
CityHomes developments (e.g., The 5 7 9, 4125 Cole and Miro
Place), having photograph of The 5 7 9, still represented
exclusively by Joseph Gullotto, of Ebby Halliday, REALTORS®
1998
• Opposer’s Exhibit 7: Happy hour party invitation for Cole
project exclusively for VIP’s, e.g., Realtors and brokers,
February 1999
• Opposer’s Exhibit 9: Flyer about “closeout specials” given
massive distribution to Realtors (August 1999)
• Opposer’s Exhibit 14: CityHomeLife, a mailer/flyer put out by
opposer on a quarterly basis, for potential buyers and
Realtors®, this one dated October 2000
• Opposer’s Exhibit 18: Collection of advertisements, including
mailers directed to Realtors and brokers
• Opposer’s Exhibit 29: “HomeCenter” real estate advertising
section of The Dallas Morning News, July 28, 2007; sometimes
brought along by Realtors
• Opposer’s Exhibit 30: New Home Source Professional, August –
October 2007, a magazine designed for real estate
professionals, having a CityHomes ad directed to real estate
agents
• Opposer’s Exhibits 31 – 33: Realtor Source, also known as “the
red book,” sent to Realtors only on a monthly basis, having
opposer’s advertisements on the front cover;
• Opposer’s Exhibit 34: CityHomes membership packet for
opposer’s companies given to Realtors®
Opposition No. 91161887
- 24 -
In any case, regardless of either party’s current
business model, the recitations of services in the
application and the registrations are sufficiently broad so
as to encompass the same relevant purchasers and the same
trade channels. Accordingly, we find that this du Pont
factor favors a finding of likelihood of confusion.
Conditions under which sales are made, and to whom
We have seen that both opposer and applicant market
their services to real estate agents/brokers and to individual
homebuyers in the market for homes with an average sales price
of $300,000. Accordingly, it seems implicit in construction,
real estate, franchising or other services involved herein,
that we are not dealing with impulse purchases by
unsophisticated individuals. Nonetheless, with marks so
very similar being used in connection with the same real
estate services, we conclude that even sophisticated
purchasers would be subject to source confusion. Octocom
Systems, Inc. v. Houston Computers Services Inc., 918 F.2d
937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
Renown of opposer’s mark
As to the du Pont factor focusing on the fame of
opposer’s prior mark (sales, advertising, length of use,
Opposition No. 91161887
- 25 -
etc.), opposer notes the following points in favor of
granting a wide berth to opposer’s CITYHOMES marks:
• use since January 1994
• over $108 million in sales
• favorable press nationally for its awards
• now CITYHOMES developments in Washington, D.C.,
New Jersey, Houston, etc.
• opposer spent more than $ 2.5 million to promote
its CITYHOMES mark between FY 2002 and FY 2005

Applicant counters that there is no direct evidence of
the fame of opposer’s marks in the record, such as market
survey evidence. Moreover, applicant points out that the
vast majority of opposer’s operations have been limited to
the Dallas / Fort Worth area of Texas.
We find that opposer appears to have made a name for
its CITYHOMES unit by garnering significant press coverage
of its awards and widespread industry recognition as one of the
country’s premier developers of urban homes.22
On the other hand, the then-owner of CITYHOMES was named
in 1999-2000 as the “20th largest builder in the Dallas/Fort
Worth area.23 While we do not deny the successes that

22 Opposer’s Exhibit 12: “D” Magazine, “Urban Living,”
September 2000; and opposer’s Exhibit 13: Builder magazine,
November 2000, “Townhomes/Townhouses Grow Up,”

23 Dallas Business Journal, August 25-31, 2000, “Filling in the
Blanks: Infill development gains ground in Dallas,” CityHomes is
listed as the 20th largest builder in Dallas/Fort Worth Metropolis
in 1999, opposer’s Exhibit 11.

Opposition No. 91161887
- 26 -
Centex’s CITYHOMES mark has experienced over the years, we
also find that its gross levels of promotional expenditures and
sales are not significant enough to support it as a famous
mark, and its renown is largely limited to Texas. Accordingly,
this du Pont factor remains a neutral one in our determination
of likelihood of confusion herein.
No actual confusion
Applicant argues that “the parties’ marks have been in
concurrent use for a decade.” This contemporaneous usage
would be most likely to cause confusion, if there were to be
any, as a result of both parties’ shared presence on the
Internet.24 The eighth du Pont factor requires us to
consider evidence pertaining to the length of time during
and conditions under which there has been contemporaneous
use without evidence of actual confusion.
However, given the nature of the services, we find that
the absence of evidence of actual confusion largely might be
explained by the fact that there has not been any
significant opportunity for actual confusion to have
occurred. See Gillette Canada, Inc. v. Ranir, 23 USPQ2d
1768 (TTAB 1992). While Atlanta and Dallas/Fort Worth are

24 Opposer at http://www.cityhomesusa.com and applicant at
http://www.citihomes.com.

Opposition No. 91161887
- 27 -
both Sunbelt cities, they are located 800 miles apart and
there is no evidence showing that the parties actually
market their services in the other’s geographic area. This
differences in the parties’ actual areas of geographical
trade for a most tangible and unmovable product like real
property is relevant under the eighth du Pont factor to the
extent that it might explain the absence of actual purchaser
confusion to date. On balance, we find that the eighth
du Pont factor is neutral in this case, or at best, that it
weighs in applicant’s favor only slightly.
Conclusion
In conclusion, we find that opposer has priority both
in view of its registrations of record and its further
evidence of use of its CITYHOMES marks in connection with
real estate development services in the nature of real
estate sales and marketing prior to the earliest date
claimed by applicant; that the marks are quite similar; that
applicant’s services are essentially the same as opposer’s
real estate services offered under the CITYHOMES mark; and
that the respective trade channels and classes of customers
are identical. This clear determination is not outweighed
by the fact that there have been no known instances of
actual confusion over the past decade; that a home is truly
Opposition No. 91161887
- 28 -
one of the largest purchases most persons will make in the
course of a lifetime, and thus, such purchasers exercise a
heightened level of care; and that opposer is not extremely
well-known outside of the Dallas / Fort Worth metropolis.
Decision: The opposition is sustained based upon the
ground of likelihood of confusion under Section 2(d) of the
Lanham Act, and registration to applicant is hereby refused.