Connect Realty.Com, Inc.

Trademark Trial and Appeal BoardJul 16, 2013

No. 85014560 (T.T.A.B. Jul. 16, 2013)

THIS OPINION IS NOT A PRECEDENT OF THE TTAB : Mailed: July 16, 2013 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Connect Realty.Com, Inc. _____ Serial Nos. 85014485 and 85014560 _____ Anastassios Triantaphyllis of Triantaphyllis Law Firm for Connect Realty.Com, Inc. Leslie Richards, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney). _____ Before Seeherman, Ritchie, and Gorowitz, Administrative Trademark Judges. Opinion by Gorowitz, Administrative Trademark Judge: Connect Realty.Com, Inc. (applicant) filed applications to register the marks CONNECTREALTY.COM (in standard character form)1 and CONNECTREALTY.COM (in design form), as set forth below 1 Application Serial Number 85014485, filed April 15, 2010, based on use in commerce pursuant to Section 1(a) of the Trademark Act. Alleged date of first use anywhere and first use in commerce– September 4, 2007. Serial No. 85014485 and 85014560 2 2 for: commercial and residential real estate agency services; providing a database of information about residential real estate listings in different neighborhoods and communities; providing a database of residential real estate listings within neighborhoods and communities specifically identified by users; providing an internet website portal offering information in the fields of real estate concerning the purchase and sale of new and resale homes and condos; providing information in the field of real estate via the internet; providing real estate listings and real estate information via the internet; real estate agencies; real estate brokerage; real estate listing in Class 36. Registration has been refused pursuant to Section 2(d) of the Trademark Act, 15 U.S.C. §1052(d), on the ground that applicant's mark so resembles the registered mark REALTY CONNECT for advertising and marketing; advertising services, namely, promoting and marketing the goods and services of others through all public communication means; advertising via electronic media and specifically the internet; advertising, including promotion relating to the sale of articles and services for third parties by the transmission of advertising material and the dissemination of advertising messages on computer networks; advertising, marketing 2 Application Serial No. 850145460, filed April 15, 2010, based on use in commerce pursuant to Section 1(a) of the Trademark Act. Alleged date of first use anywhere and first use in commerce– September 4, 2007. Serial No. 85014485 and 85014560 3 and promotional services for automotive dealerships; creation of marketing tools designed to increase a client company's knowledge of customer needs, and its competitors' products and services, pricing, advertising strategy and sales strategy; general business merchandising services, namely, marketing; information or enquiries on business and marketing; marketing services, namely, providing informational web pages designed to generate sales traffic via hyperlinks to other web sites; marketing, promotional and advertising services provided by mobile telephone connections; matching consumers with real estate professionals in the field of real estate services via computer network; matching potential buyers to facilitate co-ownership of residential real property in Class 35.3 that, as used in connection with applicant's identified services, it is likely to cause confusion or mistake or to deceive. The examining attorney issued a final refusal of registration, which applicant has appealed. As a preliminary matter, the examining attorney has objected to applicant’s introduction of a number of third-party registrations as being untimely. We agree. The registrations were submitted, for the first time, with applicant’s appeal brief. Evidence submitted after an appeal is untimely and will not ordinarily be considered by the Board. Trademark Rule 2.142(d); 37 CFR § 2.142(d). In its reply brief, applicant requested that the Board take judicial notice of the registrations. It is the Board’s well-established practice not to take judicial notice of third-party registrations, and we do not do so here. See In re Thomas Nelson Inc., 97 USPQ2d 1712, 1717, n.18 (TTAB 2011). 3 Reg. No. 3608638, issued on April 21, 2009. Serial No. 85014485 and 85014560 4 Accordingly, the objection is sustained and the third-party registrations have not been considered. We note that even if the new evidence had been considered, it would not affect the outcome herein. We turn next to the substantive issue of likelihood of confusion. Our determination of the issue of likelihood of confusion is based on an analysis of all of the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). In any likelihood of confusion analysis, two key considerations are the similarities between the marks and the similarities between the goods and/or services. 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). We turn first to the du Pont factor of the similarity or dissimilarity of the services. As set forth in the Dixie Restaurants case: Likelihood of confusion must be determined based on an analysis of the mark as applied to the … services recited in applicant's application vis-a-vis the … services recited in [a] … registration, rather than what the evidence shows the...services to be. In re Dixie Restaurants Inc., 41 USPQ2d at 1534, quoting Canadian Imperial Bank v. Wells Fargo Bank, N.A. , 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). Applicant’s service are identified in the recitations of services as “commercial and residential real estate agency services; providing a database of information Serial No. 85014485 and 85014560 5 about residential real estate listings in different neighborhoods and communities; providing a database of residential real estate listings within neighborhoods and communities specifically identified by users; providing an internet website portal offering information in the fields of real estate concerning the purchase and sale of new and resale homes and condos; providing information in the field of real estate via the internet; providing real estate listings and real estate information via the internet; real estate agencies; real estate brokerage; real estate listing.” The services set forth in the recitation of services in the cited registration include “matching consumers with real estate professionals in the field of real estate services via computer network; matching potential buyers to facilitate co-ownership of residential real property.” Applicant accepts that the aforementioned services in the cited registration “relate to real estate,” brief, p. 13, but argues that this alone is insufficient to show that the services are similar. However, the record supports a finding that these services are related, not merely that the general term “realty” can be used to describe them. Cf. General Electric Co. v. Graham Magnetics Inc., 197 USPQ 690, 694 (TTAB 1977) (It is not enough to find one term that may generically describe the goods). The examining attorney submitted copies of more than twenty third-party registrations, each of which includes both the services identified in applicant's applications and the services of matching consumers with real estate professionals, which are identified in registrant's registration. These registrations serve to suggest that applicant’s Serial No. 85014485 and 85014560 6 and registrant’s services are of a kind that may emanate from a single source. See In re RiseSmart Inc., 104 USPQ2d 1931, 1934-1935 (TTAB 2012); In re Infinity Broad. Corp., 60 USPQ2d 1214, 1217-18 (TTAB 2001); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785-86 (TTAB 1993). See, for example, • Reg. No. 3241085 for the mark RANCHO GRANDE REAL ESTATE and design Services include: matching consumers with real estate professionals in the field of real estate services via computer network in Class 35 and real estate brokerage; real estate agencies; real estate consultation; providing information in the field of real estate by means of linking the web site to other web sites featuring real estate information; real estate investment; real estate management in Class 36; • Reg. No. 3354522 for the mark- 1-800-HOUSING Services include: matching consumers with real estate professionals and loan financing professionals in the field of real estate through a global computer network in Class 35 and real estate brokerage services in Class 36; • Reg. No. 3427392 for the mark REALPRENEUR Services include: matching consumers with real estate professionals in the field of real estate services via computer network in class 35 and real estate agencies; real estate brokerage; real estate consultancy; real estate consultation; real estate listing; real estate multiple listing services; real estate procurement for others; Class 36; • Reg. No. 3706575 for the mark DIVANTI INTERNATIONAL Services: matching consumers with real estate professionals in the field of real estate services via a computer network in Class 35 and real estate brokerage in Class 36; and • Reg. No. 3654228 for the mark SAWBUCK Serial No. 85014485 and 85014560 7 Services: matching consumers with real estate professionals in the field of real estate services via a computer network in Class 35 and providing real estate listings and real estate information via the internet; real estate brokerage in Class 36. In addition, the examining attorney has provided excerpts from third-party websites which list services set forth in both the applications and the cited registration, examples of which include: FindBuyers.com (www.findbuyers.com), which provides information to buyers and sellers to facilitate the buying and selling of homes, and also provides information to agents about both buyers and sellers, and allows communication directly between buyers, sellers, and agents; Zillow.com (www.zillow.com), which provides information about agents and provides information about homes for sale or rent; and Trulia (www.trulia.com), which provides information about agents and provides information about homes for sale or rent. Applicant has not submitted any evidence to rebut the examining attorney’s evidence showing that the services are related. Accordingly, we find that applicant’s services of, at the very least, real estate brokerage and real estate listings, are related to “matching consumers with real estate professionals in the field of real estate services via computer network,” which was identified in the cited registration. Although we have not discussed whether a likelihood of confusion exists between all of applicant’s services and the services in the cited registration, likelihood of confusion must be found as to the entire class if there is likely to be confusion with respect to any item in the identification of goods [or services] for that Serial No. 85014485 and 85014560 8 class. Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Accordingly, this du Pont factor favors a finding of likelihood of confusion. It is clear from the recitations of services in both the applications and the cited registration that the relevant services are offered to consumers interested in buying or selling homes, and therefore both applicant’s and the registrant’s services can be encountered by the same classes of consumers. We turn next to the similarity of the marks. As discussed supra, applicant’s marks are CONNECTREALTY.COM (in standard character format) and CONNECTREALTY.COM in the design format set forth below: ; and the mark in the cited registration is REALTY CONNECT (in standard character format) (“Cited Mark”). Looking first at the two marks in standard character format, applicant’s mark CONNECTREALTY.COM is essentially a transposition of the Cited Mark, REALTY CONNECT. Although applicant’s mark also include the suffix, “COM.”, this is not sufficient to distinguish the marks. The element “.COM,” is a standard usage “to show a commercial internet domain.” In re 1800Mattress.com IP LLC, 586 F.3d 1359, 92 USPQ2d 1682, 1684 (Fed. Cir. 2009). As a result, the “.com” suffix Serial No. 85014485 and 85014560 9 has no source-identifying significance, and therefore its presence or absence does not affect the commercial impression of the mark. The dominant portion of applicant’s mark “CONNECTREALTY” and the Cited Mark, REALTY CONNECT, both have the same connotation, the joining of resources and people for the purpose of real estate transactions, and the marks convey the same commercial impression. “[T]he reversal in one mark of the essential elements of another mark may serve as a basis for a finding of no likelihood of confusion only if the transposed marks create distinctly different commercial impressions.” In re Nationwide Industries Inc., 6 USPQ2d 1882, 1884 (TTAB 1988), (emphasis added). See also Bank of America National Trust and Savings Assn. v. American National Bank of St. Joseph, 201 USPQ 842, 845 (TTAB 1978), and cases cited therein. As discussed supra, in this proceeding, the commercial impressions of applicant’s mark and the Cited Mark are the same. Accordingly, we find that the mark CONNECTREALTY.COM, which is the subject of Serial Number 85014485, is similar to the mark REALTY CONNECT and this du Pont factor favors a finding of likelihood of confusion. We look next at applicant’s mark CONNECTREALTY.COM in design form. Serial No. 85014485 and 85014560 10 The Cited Mark is in standard character format, and therefore we must consider that the cited mark could be used in the same stylization as applicant’s mark. “’Standard character … registrations are federal mark registrations that make no claim to any particular font style, color, or size of display and, thus, are not limited to any particular presentation.” Citigroup Inc. v. Capital City Bank Group Inc., 637 F3d 1344, 98 USPQ2d 1253, 1256 (Fed. Cir. 2011). Since the Cited Mark is unrestricted as to presentation, the stylization of applicant’s mark is not sufficient to distinguish it from the Cited Mark. The only difference between applicant’s design mark and applicant’s mark in standard character format is a minor design element and the use of a particular type font, consisting of a rather ordinary upper and lower case type style. Neither the stylized font used to depict the mark nor the minor design element changes the connotation and commercial impression of applicant’s mark, and for the same reasons that we found applicant’s standard character mark to convey the same connotation and commercial impression as the Cited Mark, we also find applicant’s design mark to have the same connotation and commercial impression as the Cited Mark. Accordingly, we find that the mark CONNECTREALTY.COM in design form, which is the subject of Serial Number 85014560, is similar to the mark REALTY CONNECT and this du Pont factor favors a finding of likelihood of confusion. Applicant alleges that the purchasers of services under both its marks and the Cited Mark are sophisticated and “carefully scrutinize the offering and the Serial No. 85014485 and 85014560 11 purchasing.” Appeal Brief, p. 13. We agree that some degree of care is taken in obtaining real estate brokerage services or seeking help in obtaining real estate brokerage services. However, even though consumers would exercise care in obtaining the services, given the similarity of the marks, they are likely to assume that the services emanate from the same source. See In re Shell Oil Co., 991 F2d 1204, 26 USPQ2d 1687, 1690 (Fed. Cir. 1993) (even sophisticated purchasers can be confused by very similar marks). Thus, applicant’s argument is not persuasive. Finally, applicant alleges that after five years of contemporaneous use, applicant is not aware of any actual confusion. Appeal Brief, pp. 13-14. However, as the Court stated in In re Majestic Distilling Co., 65 USPQ2d at 1205, applicant’s uncorroborated statements of no known instances of actual confusion are of little evidentiary value: A showing of actual confusion would of course be highly probative, if not conclusive, of a high likelihood of confusion. The opposite is not true, however. The lack of evidence of actual confusion carries little weight, J.C. Hall Co. v. Hallmark Cards, Inc., 340 F.2d 960, 964, 144 USPQ 435, 438 (CCPA 1965), especially in an ex parte context. Having considered all the evidence and arguments on the relevant du Pont factors, whether discussed herein or not, we find that applicant’s marks are likely to cause confusion with the Cited Mark. Decision: The refusals to register are affirmed.