Lefrak Organization, Inc.

Trademark Trial and Appeal BoardApr 2, 2009

No. 77432330 (T.T.A.B. Apr. 2, 2009)

Mailed: April 2, 2009 Bucher UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Lefrak Organization, Inc. ________ Serial No. 77432330 _______ Keely L. Herrick of Katten Muchin Rosenman LLP for Lefrak Organization, Inc. Elissa Garber Kon, Trademark Examining Attorney, Law Office 106 (Mary I. Sparrow, Managing Attorney). _______ Before Seeherman, Bucher and Bergsman, Administrative Trademark Judges. Opinion by Bucher, Administrative Trademark Judge: Lefrak Organization, Inc. seeks registration on the Principal Register of the mark LIVE A LITTLE BETTER (in standard character format) for, inter alia, services recited in the application, as amended, as “real estate services, namely, commercial, residential and real estate investment and management” in International Class 36.1 1 Application Serial No. 77432330 was filed on March 26, 2008 based upon applicant’s allegation of a bona fide intention to use the mark in commerce. This combined class application also recites the following services in International Class 37, which are no longer subject to the Section 2(d) refusal to register: “real estate services, namely, commercial and residential real estate development and retail real estate development, including the development of retail shopping centers.” THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77432330 - 2 - This case is now before the Board on appeal from the final refusal of the Trademark Examining Attorney to register this designation based upon Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d). The Trademark Examining Attorney asserts that applicant’s mark, when used in connection with the recited services in International Class 36, so resembles the mark LIVE BETTER (in standard character format) for “real-estate property management services”2 also in International Class 36, as to be likely to cause confusion, to cause mistake or to deceive. The Trademark Examining Attorney and applicant have filed briefs in the case. We affirm the refusal to register. In arguing for registrability, applicant argues that its mark is not confusingly similar to the cited mark; that registrant’s term “Live Better” is “heavily diluted,” forcing consumers to look to other elements of such composite marks in distinguishing among them; that applicant is the senior user by almost forty years; and that the marks have coexisted in the marketplace for more than a decade without any incidents of actual confusion. 2 Registration No. 2327900 issued to SHK Management, Inc. on March 14, 2000; Section 8 affidavit (six-year) accepted and Section 15 affidavit acknowledged. Serial No. 77432330 - 3 - By contrast, the Trademark Examining Attorney contends that the services of the applicant and of the registrant are identical; that the marks are quite similar; that applicant has failed to show that the cited mark is weak or diluted; and finally, that applicant’s alleged long use of the mark is not dispositive in this ex parte setting. Likelihood of Confusion We turn then to a consideration of the issue of likelihood of confusion. Our determination of likelihood of confusion is based upon our analysis of all of the probative facts in evidence that are relevant to the factors bearing on this issue. 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 Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In any likelihood of confusion analysis, however, two key, although not exclusive, considerations are the similarities between the marks and the relationship between the goods and/or services. See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976). Serial No. 77432330 - 4 - The Services Applicant’s relevant services include “real estate services, namely, commercial, residential and real estate investment and management” while registrant’s services are “real estate property management services.” As pointed out by the Trademark Examining Attorney, inasmuch as registrant’s recited services are broad enough to include applicant’s enumerated management services, the overlapping services herein are deemed to be legally identical. Because we have found that applicant’s and registrant’s services are legally identical, we must presume that the channels of trade and classes of purchasers are the same. In re Smith and Mehaffey, 31 USPQ2d 1531, 1532 (TTAB 1994) [“Because the goods are legally identical, they must be presumed to travel in the same channels of trade, and be sold to the same class of purchasers.”]. The Marks We turn next to the du Pont factor focusing on the similarities or dissimilarities in the appearance, sound, connotation and commercial impression of the respective marks. Palm Bay Imports Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689, 1692 (Fed. Cir. 2005). Serial No. 77432330 - 5 - We begin this discussion by noting that where the services are identical, “the degree of similarity [between the marks] 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, 1701 (Fed. Cir. 1992), cert. denied 506 U.S. 1034 (1992) [CENTURY 21 for inter alia, insurance brokerage service confusingly similar to CENTURY LIFE OF AMERICA for insurance underwriting services]; and Starbucks U.S. Brands, LLC v. Ruben, 78 USPQ2d 1741, 1752 (TTAB 2006) [finding LESSBUCKS COFFEE similar in appearance, sound, and overall commercial impression to STARBUCKS and STARBUCKS COFFEE]. Although one can point to peripheral differences between these two marks as to sound and appearance, both prominently contain the words “Live” and “Better” in that order, with the mere insertion of the modifying term "A Little" into the center of applicant’s mark. This minor addition, quantifying to some extent the degree of life’s betterment with applicant’s services, does not change significantly the sound or appearance of these marks. Applicant argues that the connotation of applicant’s mark LIVE A LITTLE BETTER is quite dissimilar from that of registrant’s cited mark, LIVE BETTER. Applicant takes the position that the addition of the term “A Little” within Serial No. 77432330 - 6 - its mark distinguishes these respective marks. Applicant claims that registrant’s mark connotes luxury and opulence, while its mark indicates an elevated but still modest standard of living that is obtainable by the average, hard-working consumer. We disagree. The addition of the term “A Little” does not change the connotation of these respective marks so significantly. First, we are not convinced that “Live Better” connotes living in a mansion, as contrasted with applicant’s interpretation of “Live A Little Better” as emphasizing the possibility of modest improvements – “a step above the average dwelling but still attainable.” We also agree with the Trademark Examining Attorney that we must look as what these words convey to prospective consumers in 2009 – not the nuances that arguably may have been conveyed fifty years ago to a target audience that no longer exists in the borough of Queens. Second, applicant’s entire argument appears to ignore the fact that under actual market conditions, consumers generally do not have the luxury of making side-by-side comparisons. In determining whether there is a likelihood of confusion we must consider the recollection of the average purchaser who normally retains a general, overall commercial impression engendered by the involved trademark Serial No. 77432330 - 7 - or service mark, rather than a specific impression. Puma- Sportschuhfabriken Rudolf Dassler KG v. Roller Derby Skate Corporation, 206 USPQ 255 (TTAB 1980); and Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975). The Trademark Examining Attorney points out that consumer confusion may be found even when marks do not physically sound or look alike, provided that they convey the same idea, stimulate the same mental reaction, or may have the same overall meaning. Proctor & Gamble Co. v. Conway, 419 F.2d 1332, 1336, 164 USPQ 301, 304 (CCPA 1970) [MR. STAIN likely to be confused with MR. CLEAN on competing cleaning products]; Ralston Purina Co. v. Old Ranchers Canning, 199 USPQ 125 (TTAB 1978) [TUNA O’ THE FARM for canned chicken likely to be confused with CHICKEN O’ THE SEA for canned tuna]; and Downtowner Corp. v. Uptowner Inns, Inc., 178 USPQ 105 (TTAB 1973) [UPTOWNER likely to be confused with DOWNTOWNER for identical motel services]. In sum, the additional wording in applicant’s mark alters neither the connotations nor commercial impressions of these marks when compared in their entireties. Especially in light of the fact that the respective services are identical, we agree with the Trademark Examining Attorney that any differences in connotation or commercial impression engendered by the respective marks are too Serial No. 77432330 - 8 - “little” to overcome a likelihood of confusion. In re Chatam International Inc., 380 F.3d 1340, 1343, 71 USPQ2d 1944, 1946 (Fed. Cir. 2004) ["Viewed in their entireties with non-dominant features appropriately discounted, the marks GASPAR’S ALE for beer and ale and JOSE GASPAR GOLD for tequila become nearly identical”]; Hewlett-Packard Co. v. Packard Press Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002) [HEWLETT PACKARD confusingly similar to PACKARD TECHNOLOGIES]; and In re El Torito Restaurants Inc., 9 USPQ2d 2002 (TTAB 1988) [MACHO COMBOS for food items and MACHO for sandwich is likely to cause confusion]. The number and nature of similar marks registered in connection with similar services Applicant points to at least nine registrations owned by seven different third-parties. These marks have in common the word “Better” along with some form of the word “Live,” “Living” or “Life.” Applicant argues that these third-party registrations show that registrant’s mark, or a portion of the mark, is so commonly used that the consuming public will look to other elements to distinguish the source of goods or services. AMF Inc. v. American Leisure Products, Inc., 474 F.2d 1403, 177 USPQ 268, 269-70 (CCPA 1973); Plus Products v. Star Kist Foods, Inc., 220 USPQ 541, 544 (TTAB 1983). Consequently, applicant argues that Serial No. 77432330 - 9 - registrant’s mark is relatively weak and entitled to only a narrow scope of protection. However, we find that these third–party registrations do not prove the weakness or dilution of registrant’s mark. Trademark registrations do not prove that the marks are in use, and hence, there is no way an assessment can be made as to what, if any, impact those marks may have made in the marketplace. See Seabrook Foods, Inc. v. Bar-Well Foods, Limited, 568 F.2d 1342, 196 USPQ 289 (CCPA 1977). Furthermore, as noted by the Trademark Examining Attorney, even weak marks are entitled to protection from confusion with similar marks for closely-related services. Hollister Incorporated v. Ident A Pet, Inc., 193 USPQ 439 (TTAB 1976). Finally, the only registration that is for real estate management services is for the mark BETTER LIVING. BETTER LIFE. The paired couplet in this mark is absent from both applicant’s and registrant’s marks. In fact, the marks at issue herein are more similar to each other than either one is to any of the third-party marks submitted by applicant. Period of contemporaneous use without actual confusion We turn next to the du Pont factor dealing with the length of time during and conditions under which there has been contemporaneous use without evidence of actual Serial No. 77432330 - 10 - confusion. Applicant argues that inasmuch as these two marks have coexisted in the marketplace for more than a decade without any incidents of actual confusion, this provides strong evidence that confusion is not likely to occur in the future. As noted by our reviewing Court: [Applicant’s] uncorroborated statements of no known instances of actual confusion are of little evidentiary value. See In re Bissett- Berman Corp., 476 F.2d 640, 642, 177 USPQ 528, 529 (CCPA 1973) [stating that self- serving testimony of appellant’s corporate president’s unawareness of instances of actual confusion was not conclusive that actual confusion did not exist or that there was no likelihood of confusion]. 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. In re Majestic Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). In any event, we are mindful of the fact that the test under Section 2(d) of the Act is likelihood of confusion, not actual confusion. Applicant as Senior User Finally, we note applicant’s argument that it used its mark for decades before the cited mark was used or registered. However, in an ex parte proceeding, applicant’s Serial No. 77432330 - 11 - claim of priority of use is not relevant. In re Calgon Corp., 435 F.2d 596, 168 USPQ 278 (CCPA 1971). Section 7(b) of the Lanham Act, 15 U.S.C. § 1057(b), provides that the registrant’s certificate of registration is prima facie evidence of the validity of that registration, of the registrant’s ownership of the mark, and of the registrant’s exclusive right to use the mark in commerce on or in connection with the services specified in the certificate. Hence, this proceeding is not the correct forum for an attack on the cited registration. Decision: In light of the legally identical services and confusingly similar marks herein, the Trademark Examining Attorney’s refusal to register this mark under Section 2(d) of the Trademark Act is hereby affirmed as to the services recited in International Class 36. However, the application will proceed to publication with respect to the real estate development services recited in International Class 37.