Long and Foster Companies, Inc.v.LFC Corporate Services, Inc.Download PDFTrademark Trial and Appeal BoardSep 28, 2010No. 91181109 (T.T.A.B. Sep. 28, 2010) Copy Citation Hearing: Mailed: June 24, 2010 September 28, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board ______ Long and Foster Companies, Inc. v. LFC Corporate Services, Inc. _____ Opposition No. 91181109 _____ Leo M. Loughlin and Halle B. Markus of Arent Fox LLP for Long and Foster Companies, Inc. M. Alim Malik of Jackson DeMarco Tidus & Peckenpaugh for LFC Corporate Services, Inc. ______ Before Quinn, Taylor and Bergsman, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: LFC Corporate Services, Inc. (“applicant”) has filed applications to register on the Principal Register the following marks: LFC (in standard character format)1 LFC.COM (in standard character format)2 1 Serial No. 78905527, filed on June 11, 2006, and asserting July 8, 1986 as the date of first use of the mark anywhere and in commerce. 2 Serial No. 78905526, filed on June 11, 2006, and asserting April 30, 1995 as the date of first use of the mark anywhere and in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Opposition No. 91181109 2 LFC ONLINE (in standard character format - ONLINE disclaimed),3 all for “Advertising and advertisement services; Advertising and commercial information services, via the internet; Advertising and marketing; Auctioneering; Auctioneering via telecommunication networks; Real estate advertising services; Real estate auctions; Real estate marketing services, namely, on-line services featuring tours of residential and commercial real estate; Real estate sales management” in International Class 35; and LFC (in standard character format)4 LFC.COM (in standard character format)5 LFC ONLINE (in standard character format – ONLINE disclaimed),6 all for “Mortgage procurement for others; Mortgages services, namely, buyer pre-qualification of mortgages for mortgage brokers and banks; Real estate acquisition services; Real estate agencies; Real estate brokerage; Real 3 Serial No. 78903363, filed on June 7, 2006, and asserting April 30, 1995 as the date of first use of the mark anywhere and in commerce. 4 Serial No. 78906366, filed on June 12, 2006, and asserting July 8, 1986 as the date of first use of the mark anywhere and in commerce. 5 Serial No. 78906359, filed on June 12, 2006, and asserting April 30, 1986 as the date of first use of the mark anywhere and in commerce. 6 Serial No. 78903364, filed on June 7, 2006, and asserting April 30, 1995 as the date of first use of the mark anywhere and in commerce. When setting forth serial number of this application in their briefs, both opposer and applicant made a typographical error in the serial number, i.e., the number was mistakenly set forth as Serial No. 78906364. We will refer to the correct serial number in our decision. Opposition No. 91181109 3 estate consultancy; Real estate consultation; Real estate escrow services, Real estate investment; Real estate listing; Real estate management; Real estate management consultation” in International Class 36. Long and Foster Companies, Inc. (“opposer”) has filed a consolidated notice of opposition to the registration of the three marks set forth in the six referenced applications. As grounds for opposition against each, opposer has alleged that since as early as May 16, 1968, it has used the letters LF to advertise and market its core services of real estate brokerage services, real estate management and leasing services, insurance brokerage services, mortgage loan services, and real estate settlement services; and that it owns trademark Registration No. 14700307 for the mark LF and design, shown below, for those services. Opposer additionally alleges ownership of the following registrations: Registration No. 14887818 7 Issued December 22, 1987, renewed. The registration claims May 16, 1968 as the date of first use of the mark anywhere and in commerce. 8 Issued May 17, 1988, renewed. The registration claims May 16, 1968 as the date of first use of the mark anywhere and in commerce. Opposition No. 91181109 4 for “real estate brokerage services; real estate management and leasing services; insurance brokerage services; mortgage loan services; [and] real estate settlement services” in International Class 35; Registration No. 20298409 for “real estate brokerage services” in International Class 36; and Registration No. 331520010 for “Employee relocation services; providing an online business directory of vendors of moving and relocation, home building and contracting, appraisal, inspection, design, decoration, furnishing repair, maintenance, improvement, 9 Issued January 14, 1997, renewed. The registration claims July 1, 1994 as the date of first use of the mark anywhere and March 1, 1995 as the date of first use of the mark in commerce. The registration also includes the following statement: The drawing is lined for the colors red, yellow and blue. 10 Issued October 23, 2007. The registration claims July 1, 1994 as the date of first use of the mark anywhere and March 1, 1995 as the date of first use of the mark in commerce. Opposition No. 91181109 5 cleaning, landscaping, security, financial, and lifestyle products and services offered in specific geographic areas; promoting the goods and services of others by providing online information concerning vendor discounts” in International Class 35; “real estate management and leasing services, real estate title insurance brokerage and underwriting services; mortgage brokerage; homeowners and auto insurance brokerage and financing services; home warranty insurance brokerage; providing telephonic information and consulting services about insurance and mortgage loan services” in International Class 36; and “real estate settlement services; title searching and recordation services” in International Class 42. Opposer further alleges that the marks in its registrations are used in the advertising and marketing of its services throughout the United States; that it has used the letters LF in the promotion of its services for almost 40 years prior to the filing dates of applicant’s applications and prior to applicant’s earliest claimed first use date of 1986; that it has acquired valuable goodwill in the designation LF in connection with its services; that the LF designation has acquired fame in relation to opposer and its services; and that in view of the substantial similarity between applicant’s LFC marks and opposer’s LF marks, and the identical nature of the parties’ services, the LFC marks so resemble opposer’s previously used and registered trademarks Opposition No. 91181109 6 embodying the letters LF as to cause confusion, mistake, or to deceive under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). Opposer also alleges that it “uses LONG & FOSTER COMPANIES in its print advertising for its [real estate brokerage, real estate management and leasing, insurance brokerage, mortgage loan and real estate settlement] services” and that the public would be likely to associate the letters LFC with LONG & FOSTER COMPANIES. Not of Opp., ¶¶ 3 and 7. Applicant, in its answer, admitted opposer is the owner of Registration Nos. 1470030; 1488781; 2029840 and 3315200,11 but otherwise has denied the salient allegations of the notice of opposition.12 EVIDENTIARY OBJECTIONS We first consider the evidentiary objections that each party has lodged against the other, beginning with opposer’s. Opposer objects to the submission of the discovery deposition of William Lange, applicant’s vice-president, through a notice of reliance pursuant to Trademark Rule 2.120(j), discussed below, because applicant “improperly submitted the entire 11 Applicant’s answer ¶¶ 1 and 2. 12 Applicant also asserted as affirmative defenses the defenses of laches, unclean hands, estoppel, acquiescence and waiver. However, because these defenses were inadequately pleaded and because applicant neither took testimony nor argued in its brief in regard to any of them, they will not be further considered. To the extent applicant claimed additional “affirmative defenses,” those statements, set forth in paragraphs 11 through 20 of the answer, merely serve to amplify applicant’s denials of opposer’s priority and likelihood of confusion claim. Opposition No. 91181109 7 deposition with exhibits, and did not explain how the excerpts submitted by Long & Foster were misleading.” (Opposer’s br. p. 3). Applicant responded, arguing that there is no basis to limit the deposition testimony. Applicant contends that “as Opposer’s designation of the Lange deposition was entirely inadequate and LFC, under the rules, is allowed to designate the entire deposition as it intends to use the entire deposition.” (Applicant’s br. p. 9). The discovery deposition of an officer of a party may be offered in evidence only by an adverse party, except that if only part of a discovery deposition is submitted and made part of the record by a party, an adverse party may introduce under a notice of reliance any other part of the deposition which should in fairness be considered so as to make not misleading what was offered by the submitting party. Trademark Rule 2.120(j). See also First Int’l Servs. Corp. v. Chuckles Inc., 5 USPQ2d 1628, 1630 n.5 (TTAB 1988). The notice of reliance filed by the adverse party to introduce the discovery deposition of its own officer, however, must be supported by a written statement explaining why the adverse party needs to rely upon the additional portions. Id. In this case, applicant did not specify those portions of the Lange deposition that it thought relevant to prevent misinterpretation of the portions submitted by opposer, opting instead to submit the entire deposition, or explain why the Opposition No. 91181109 8 submission of any additional part, much less the whole, of the deposition is necessary to overcome any potential misunderstanding. As such, the submission of the Lange deposition in its entirety is improper.13 Accordingly, opposer’s objection is sustained and only those portions of the Lange deposition (set forth with particularity, infra) made of record by opposer have been considered in this decision. We add that even if we had considered the entirety of the deposition, our decision would be the same.14 Applicant has objected to opposer’s submission as rebuttal testimony a notice of reliance on application Serial No. 77835110 for the mark LF LONG & FOSTER COMPANIES & crest design for various real estate related services15 on the grounds that it is untimely, having been filed after the close of the testimony period, and as being irrelevant to these 13 Applicant also had the option of deposing Lange during its testimony period. 14 We note that during the oral hearing, applicant’s counsel indicated that applicant is not relying on the Lange deposition, although applicant apparently takes issue with page 69 of the deposition presently of record. With regard to page 69, discussing applicant’s real estate auction and real estate brokerage services in some detail, any remaining dispute as to applicant’s need to clarify these statements with other parts of the deposition is of no moment, because our consideration of the relatedness of the services is based solely on an analysis of the services recited in applicant’s applications vis- à-vis those recited in opposer’s pleaded registrations. In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n. 4 (Fed. Cir. 1993); and Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1992). 15 Opposer stated in the notice of reliance that the application is relevant to show, “among other things, Opposer’s use and attempted registration of the mark LF LONG & FOSTER COMPANIES accompanied by the prominent display of ‘LFC’ by Opposer.” Opposition No. 91181109 9 proceedings. Opposer, on the other hand, argues that the evidence is timely, having been filed prior to the close of its rebuttal testimony period. Opposer also contends that use of LONG & FOSTER COMPANIES is relevant to this proceeding and therefore a pending application for that mark is also relevant. Although the rebuttal notice of reliance was not untimely filed, having been filed on October 20, 2009, one day prior to the close of opposer’s rebuttal testimony period (as last reset), and opposer’s use of an assertedly similar mark is relevant to the likelihood of confusion claim at issue in this proceeding, we find that it is too late in this proceeding for opposer to assert ownership of the application. Notwithstanding that the application was not filed until September 25, 2009, its inclusion in the record at this late date would result in prejudice to applicant. See generally TBMP § 509.01(b)(2)(2d ed. rev. 2004).16 In any event, an application is evidence only that it has been filed. Interpayment Services Ltd. v. Docters & Thiede, 66 USPQ2d 1463, 1468 n.6 (TTAB 2003). In addition, during opposer’s testimony deposition of Michelle Ball, opposer’s vice president of corporate advertising and marketing, applicant made several objections 16 Our decision does not prevent us, however, from considering evidence of opposer’s common law use of LONG & FOSTER COMPANIES that is properly of record. Opposition No. 91181109 10 on the grounds of speculation and lack of foundation primarily to Ms. Ball’s responses to questions regarding the fame and public knowledge/recognition of Long & Foster and the pleaded registrations, especially the LF and crest design mark. In addition, applicant, in its brief, reiterates that Ms. Ball’s statements on expenditures by opposer are hearsay, speculative and lack foundation in the absence of detailed financial statements to support her testimony. We point out that Ms. Ball provided testimony in her capacity as an officer of opposer, and her testimony is clear and concise and based on annual reports and sales graphs reflecting market share prepared from data compiled by Data Concepts Company, a third-party research company. (Ball test. pp. 6, 17-19 and 91, exh. 10). Accordingly, applicant’s objection is overruled. Even so, we are mindful of applicant’s objections which relate principally to the probative value to be accorded the statements and evidence in question, and we have accorded the relevant testimony and evidence the appropriate probative weight. THE RECORD In light of the foregoing, the record in this proceeding consists of the pleadings and the files of application Serial Nos. 78905527, 78905526, 78906366, 78903363, 78906359 and 78903364. In addition, during its assigned testimony period, opposer submitted: Opposition No. 91181109 11 1) the testimony deposition, with exhibits 1 through 35, of Michelle Beaubien Ball taken on June 24, 2009; 2) a notice of reliance on (i) applicant’s answers to opposer’s first set of interrogatories; and (ii) pages 1, 10, 20-21, 29, 31, 35, 40, 43, 45, 58, 63-71, 75, 77, 81- 85, with attached exhibits 4 and 15, of the discovery deposition of applicant’s witness, William Lange, taken on November 6, 2008; and 3) a notice of reliance on status and title copies of pleaded Registration Nos. 1470030, 1488781, 2029840 and 3315200. Applicant, during its testimony period submitted: 1) a notice of reliance on the testimony deposition, with exhibits, of opposer’s witness, Michelle Beaubien Ball and applicant’s answer’s to opposer’s first set of interrogatories; and 2) a notice of reliance on (i) portions of the applications for registration of involved applications Serial Nos. 78905527, 78906366, 78906359, 78905526, 78903363; and (ii) portions of application Serial No. 77112965, an application filed by opposer for registration of the mark LFC INTEGRITY FIRST.17 FINDINGS OF FACT Opposer 17 We point out with regard to this evidence that the Ball deposition, with exhibits, as well as applicant’s responses to all of opposer’s interrogatories were made of record by opposer, and thus, either party was free to present arguments based on them. Unless fewer than all of applicant’s responses to the interrogatories were made of record by opposer, and additional ones were necessary so as not to make the submitted responses misleading, applicant could not have relied on its own discovery responses. See Trademark Rule 2.120(j)(5). We further note that the underlying application files of applicant’s involved registrations are already of record pursuant to Trademark Rule 2.122(b). Accordingly, the resubmission of these materials was duplicative and unnecessary. Opposition No. 91181109 12 Opposer, Long & Foster Companies, Inc., is a home ownership company that offers real estate, mortgage, title and insurance. Ball test. p. 12. Opposer is the largest privately owned real estate company in the country and has been in business since 1968. Ball test. p. 41. Since 1968, opposer has continuously used a mark consisting of the letters L and F inside a shield ( or the “LF and crest design mark”). The LF and crest design mark is the subject of pleaded Registration No. 1470030 and is featured in several other registrations in combination with the words Long & Foster. Ball test. p. 4. Long and Foster Companies, Inc. has four business units which include Long and Foster Real Estate, Inc., Walker Jackson and Prosperity Mortgage Companies, Long & Foster Insurance Agency, Inc. and Long & Foster Settlement Services. Ball test. pp. 12-13 and 61. Long & Foster Real Estate, Inc. is the largest independently owned real estate real estate company in America and has been in business since 1968. Ball test. p. 12. Opposer offers its various real estate services in brick and mortar offices as well as via the internet and telephone. Ball testimony p. 15. Opposer, at the time of the Ball deposition, had 208 sales offices and 14,000 real estate agents operating in offices in seven states, i.e., Virginia, West Virginia, Maryland, Pennsylvania, Delaware, New Jersey Opposition No. 91181109 13 and North Carolina, and the District of Columbia, referred to by opposer as the Mid-Atlantic region. Ball test. pp. 15 and 25-26. In addition, opposer has a relocation division through which it serves customers nationwide, and is a member of the Leading Real Estate Companies of the World, which is the largest referral network in the country and through which it handles real estate referrals from around the world. Ball test. p. 16. In 2008 alone, the sales volume for opposer’s services, including real estate, mortgage, insurance, title and settlement services, was 48.9 billion dollars with 26.4 billion being attributable to real estate sales. Ball test. pp. 16-17. Real estate sales for 2006 and 2007 were 40.6 billion and 35.4 billion respectively. Ball test. exh. 33. Opposer, in 2008, had a 52% market share in the Washington, D.C. market area, a 45% market share in the Baltimore area and double the market share of its nearest competitor in the Virginia, Maryland and Washington D.C. markets. Ball test. exh. 10. Opposer also extensively advertises its services using the LF and crest design mark and, in 2008, spent 18 million dollars on such advertising. Ball test. p. 54. Opposer advertises its services on television, radio, newspapers, direct mail, billboards and the internet. Ball test. pp 54- 55 and 77. Opposer consistently advertises in the Opposition No. 91181109 14 Washington Post, Baltimore Sun, Philadelphia Inquirer, Richmond Times and The Virginia Pilot newspapers and on the internet sites, www.washingontonpost.com and its website www.longandfoster.com. The longandfoster.com site averages nearly one million unique visitors a month. Ball test. pp. 21 and 55. The LF and crest design mark is displayed on nearly every piece of advertising opposer distributes, appears on “For Sale” signs outside all of the properties offered for sale by opposer, appears on signage for opposer’s 208 sales offices throughout the Mid-Atlantic and is used in contracts and other business documents. Ball test. pp. 28, 35, 41 and 63. Applicant What information we have regarding applicant and its services was obtained through applicant’s responses to opposer’s interrogatories and those portions of and exhibits to the Lange deposition made of record by opposer. Applicant, LFC Corporate Services, Inc., operates a real estate business, including real estate auctions and “normal brokerage sales,” mortgages, escrow and real estate advertising. Lange dep. p. 69, Applicant’s resp. to interrogatory No. 5. Applicant uses print, radio, television, the internet, signage and public relations media (press releases) for the advertising and promotion of its services offered under the LFC mark. Applicant’s resp. to Opposition No. 91181109 15 interrogatory No. 11., Lange dep. p. 72. Applicant’s services under the LFC mark are offered to any company or person on a worldwide basis who has a need for services relating to real estate brokerage, mortgage finance, advertising, public relations, corporate administration, escrow and internet technology. Applicant’s resp. to interrogatory No. 16. DISCUSSION Standing Because opposer has properly made its pleaded registrations of record, we find that opposer has established its standing to oppose registration of applicant’s mark. See Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d 1842 (Fed. Cir. 2000); and Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982). Nevertheless, applicant argues that opposer lacks standing because it does not provide the services enumerated in the pleaded registrations.18 Because applicant did not 18 Applicant specifically argues: It appears that Opposer has attempted to deliberately blur these entity lines. The real estate entity, Long & Foster Real Estate, Inc., appears to be the entity that is active in the real estate held over which Opposer claims likelihood of confusion with Applicant’s LFC mark. However, Long & Foster Real Estate, Inc. owns no trademarks and did not oppose the applicant’s mark [sic] applications. As such, Opposer has no standing to oppose the LFC that are pending. Applicant’s br. p. 13. Opposition No. 91181109 16 file counterclaims against the pleaded registrations, this argument is an improper collateral attack on the pleaded registrations and, as such, will not be heard.19 Cosmetically Yours, Inc. v. Clairol Inc., 424 F.2d 1385, 1387, 165 USPQ 515, 517 (CCPA 1970) (“As long as the registration relied upon … remains uncanceled, it is treated as valid and entitled to the statutory presumptions.”). Opposer, as the owner of the valid and subsisting registrations of record, has standing to bring the opposition, and those registrations are entitled to all the presumptions flowing from 7(b) of the Trademark Act, including the presumptions of validity, opposer’s ownership of the marks and of opposer’s exclusive right to use the mark in commerce in connection with the services set forth in the registrations. Priority Because opposer’s pleaded valid and subsisting registrations are of record, Section 2(d) priority is not an issue in this case as to the marks therein and the services covered thereby. King Candy Co. v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108 (CCPA 1974). As such, applicant’s contention that it has priority of LFC is not 19 We add that even if applicant could have brought such a claim, success thereon is doubtful. As noted by opposer in its rebuttal brief, use of a registered mark by a related company shall inure to the benefit of the registrant and shall not affect the validity of the mark. See Section 5 of the Lanham Act, 15 U.S.C § 1055. Opposition No. 91181109 17 relevant because opposer is basing its priority claim on its pleaded registrations comprising in part the letters LF.20 As discussed below, we have considered only the registered LF and crest design mark in this decision. Likelihood of Confusion Opposer has pleaded ownership of four registrations in the notice of opposition. In analyzing likelihood of confusion, we limit our discussion to Registration No. 1470030 for the LF and crest design mark, i.e., , for “real estate brokerage services, real estate management and leasing services, insurance brokerage services, mortgage loan services, and real estate settlement services,” as the mark and services are the closest to applicant’s marks and recited services. Notably, it is the mark that is the primary focus of the parties’ arguments. 20 We add that, in any event, because there is no testimony regarding the dates of use of the LONG & FOSTER COMPANIES mark, and because the evidence does not show any use of the mark that predates the filing date of any of applicant’s applications, opposer, on this record, did not establish priority in the LONG & FOSTER COMPANIES mark. Opposer additionally seeks to rely on its common law use of several LF formative marks in support of its likelihood of confusion claim. These marks include L&F Asset Management, L&F Business Accessories, L & F S.T.A.R.S., L&F Direct Mail Center and LF Vacations. As applicant points out, these marks were not pleaded in the notice of opposition. While they were the basis of some testimony and argument, the record does not support a finding that the issue was tried by the implied consent of the parties. See Fed. R. Civ. P. 15(b). Accordingly, these marks will not be discussed further. Opposition No. 91181109 18 Our determination under Section 2(d) is based on an analysis of all the facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). In considering the evidence of record on these factors, we keep in mind that “[t]he 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.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976). Fame We begin our likelihood of confusion analysis with the du Pont factor which requires us to consider evidence of the fame of opposer’s mark and to give great weight to such evidence if it exists. See Bose Corp. v. QSC Audio Products Inc., 293 F.3d 1367, 63 USPQ2d 1303 (Fed. Cir. 2002); Recot Inc. v. Becton, 214 F.3d 1322, 54 F.2d 1894 (Fed. Cir. 2000); and Kenner Parker Toys, Inc. v. Rose Art Industries, Inc., 963 F.2d 350, 22 USPQ2d 1453 (Fed. Cir. 1992). Fame for likelihood of confusion purposes arises “as long as a significant portion of the relevant consuming public … recognizes the mark as a source indicator.” Palm Bay Imports, Inc. v. Vueve Cliquot Ponsardin Maison Fondee En 1722, 396 F.3d 1369, 73 USPQ2d 1689, 1694 (Fed. Cir. 2005). Opposition No. 91181109 19 In this case, the relevant consumers would be anyone, including members of the general public, seeking services related to the buying and selling of real estate. Fame may be measured indirectly by the volume of sales and advertising expenditures of the goods and services at issue, by the length of time the mark has been in use, widespread critical assessments and notice by independent sources of the goods and services identified under the mark, as well as the general reputation of the services. Bose Corp. v. Audio Products Inc., 63 USPQ2d at 1305-1306; Blue Man Productions Inc. v. Tarmann, 75 USPQ2d 1811, 1817 (TTAB 2005). This information, however, must be placed in context (e.g., a comparison of advertising figures with competitive products, market share, reputation of the products, etc.). Bose Corp. v. Audio Products, Inc., 63 USPQ2d at 1309. The evidence supporting the fame of opposer’s LF and crest design mark includes its use for over 40 years in connection with various real estate related services including real estate brokerage; the 48.9 billion dollars in sales of opposer’s services in 2008 alone - 26.4 billion of which is attributable to real estate sales and which translate into a dominant market share in the states in which opposer operates, as well as the 40.4 billion and 35.4 billion dollars in real estate sales in the years 2006 and 2007, respectively; the diversity in advertising modes; the Opposition No. 91181109 20 public exposure to opposer’s mark as a result of signage displayed on every piece of real estate for sale by opposer, as well as some renown as evidenced by testimony regarding industry awards. We observe, however, that although opposer expended 18 million dollars in advertising in 2008, this figure was not submitted in context and, thus, we are unable to ascertain its significance in the real estate industry. Further, applicant’s advertising figure covers only a single year and is therefore not particularly meaningful. More importantly, nearly every reference to the LF and crest design mark includes the addition of the words “LONG & FOSTER” (often in combination with other matter, e.g., Real Estate, Inc.) superimposed on a three-color rectangle. Indeed, opposer made of record its Graphic Standards Manual, wherein it states “[t]he heart of Long & Foster®’s corporate identity program is the three-color Long & Foster logo. It is the one, fundamental, unchanging element upon which all our graphic standards are founded. It should always be used as shown and never modified in any way.” Ball test. exhs. 8 and 9 (emphasis supplied). The manual also indicates that “[t]he three color logo is on Sales Associates’ business cards, used on post and yard signs, on all Web sites, and in all corporate, office and agent advertising and collateral material. Id. Thus, the extent of public recognition and Opposition No. 91181109 21 renown of the LF and crest design mark separate and apart from the words LONG & FOSTER is not clear. Cf. Bose Corp. v. QSC Audio Products Inc., 63 USPQ2d at 1308 (“we think those who claim fame for product [or service] marks that are used in tandem with a famous house mark can properly be put to tests to assure their entitlement to the benefits of fame for the produce [or service] marks”). “In view of the extreme deference that is accorded to a famous mark in term of the wide latitude of legal protection it receives, and the dominant role fame plays in the likelihood of confusion analysis, we think that it is the duty of a plaintiff asserting that its mark is famous to clearly prove it.” Blue Man Productions Inc. v. Tarmann, supra at 1819. See also Leading Jewelers Guild, Inc. v. LJOW Holdings, LLC, 82 USPQ2d 1901, 1904 (TTAB 2007) (“It is the duty of a party asserting that its mark is famous to clearly prove it.”). While opposer has demonstrated that its mark has achieved some degree of recognition, the evidence is not sufficient to support a finding that the mark is famous and thus entitled to the extensive breadth of protection accorded a truly famous mark. Nonetheless, based on the record, we find opposer’s LF and crest design mark distinctive and strong and entitled to a broad scope of protection. In coming to this determination, we have considered all of the evidence relevant thereto, Opposition No. 91181109 22 including the absence of any evidence of third-party use or registration of similar marks for similar services. Relatedness of the Services/Trade Channels/Purchasers We next consider the du Pont factors which pertain to the relatedness of the services, channels of trade and classes of purchasers. It is well settled that likelihood of confusion is determined on the basis of the services as identified in the application(s) and in the pleaded registration. Hewlett- Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002). Where the services in the application and pleaded registration are broadly identified as to their nature and type, such that there is an absence of any restrictions as to the channels of trade and no limitation as to the classes of purchasers, it is presumed that in scope the identification of the services encompasses not only all the services of the nature and type described therein, but that the identified services are offered in all channels of trade which would be normal therefor, and that they would be purchased by all potential buyers thereof. In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). Opposer’s services are identified as “real estate brokerage services, real estate management and leasing services, insurance brokerage services, mortgage loan services, and real estate settlement services.” Applicant’s services are identified in application Serial Nos. 78905527, Opposition No. 91181109 23 78906359 and 78903363 as “advertising and advertisement services; advertising and commercial information services, via the internet; advertising and marketing; auctioneering; auctioneering via telecommunication networks; real estate advertising services; real estate auctions; real estate marketing services, namely, on-line services featuring tours of residential and commercial real estate; real estate sales management.” The real estate advertising, real estate auctions, real estate marketing and real estate sales management services recited in each application are related and complementary to registrant’s services inasmuch as they all facilitate the buying and selling of real property. Further, the services recited in applicant’s application Serial Nos. 78906366, 78905526 and 78903364 are legally identical, in part, as to the mortgage loan services,21 real estate brokerage services and real estate management recited in opposer’s pleaded registration. It is established that likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the recitation of goods [or services] in the application, even if the common goods [or services] constitute only a small percentage of the goods [or services] intended for sale. See 21 Because opposer’s mortgage loan services are so broadly identified, we find they encompass the mortgage procurement for others and buyer pre-qualification of mortgages for mortgage brokers and banks identified in the applications. Opposition No. 91181109 24 Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). Here, the identical and/or complementary nature of the parties’ services is sufficient to demonstrate that they are related for purposes of our likelihood of confusion analysis. Indeed, applicant does not argue otherwise and, in fact, indicates in its brief that the LFC marks are used and have been used in the real estate field. Applicant’s br. p. 10. Applicant reiterated this position at oral hearing when its counsel conceded that the services are very close. Applicant nonetheless contends that “[w]hile both parties offer their services to the general public, their channels of trade are not exactly similar. LFC does not have 14,000 agents or 208 sales office locations claimed by opposer. The only similarity is that both parties advertise listings of real estate on the internet.” Applicant’s br. p. 11 (citation omitted). This argument is unavailing. As noted above, because neither opposer’s nor applicant’s service recitations contain limitations or restrictions as to types of purchasers or channels of trade, we must presume that the legally identical services will be offered in the same channels of trade and will be purchased by the same classes of purchasers, while the related and/or complementary services will be sold or offered in the channels of trade that would be normal for such services, including via brick and mortar establishments, Opposition No. 91181109 25 sales agents, and the internet, and to all normal purchasers, including ordinary consumers seeking to buy or sell real property. See In re Elbaum, 211 USPQ at 640. Therefore, at a minimum, we presume that the channels of trade and purchasers overlap. Accordingly, the du Pont factors of relatedness of the services, channels of trade and classes of purchasers favor opposer. Similarity/Dissimilarity of the Marks We now consider the marks. Applicant contends that there is no likelihood of confusion because its marks, LFC (Application Serial Nos. 78905527 and 78906366), LFC.COM (Application Serial Nos. 78906359 and 78905526) and LFC ONLINE (Application Serial Nos. 78903363 and 78903364) are distinguishable in sound, appearance, connotation and commercial impression from opposer’s mark . Applicant argues “[w]hile there is “a passing similarity between the 2 letters of the alphabet portion of the marks “LF” and “LFC,” the design elements set them apart.” Applicant’s br. p. 36. Opposer, on the other hand, maintains that the parties’ respective marks are virtually identical in sound, appearance, connotation and commercial impression. Opposer argues that “the dominant portion of the marks ‘LF’ and ‘LFC’ obviously consists of the identical letters, ‘LF.’ These marks are Opposition No. 91181109 26 unpronounceable except as the separate letters, and would be more difficult to remember, and thus, more susceptible of confusion or mistake.” Opposer’s br. p. 19. Opposer further argues that the letters “LF” are the essential features of its LF and crest design mark despite the appearance of these letters within a crest design and that the additional letter “C” at the end of opposer’s marks is insufficient to avoid a likelihood of confusion. In determining the similarity or dissimilarity of marks, we must consider the marks in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 73 USPQ2d at 1692. 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 that confusion as to the 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 Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). That is, the purchaser’s fallibility of memory over a period of time must be kept in mind. See Grandpa Pidgeon’s of Missouri, Inc. v. Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and Spoons Restaurant Inc. v. Morrison Inc., 23 USPQ2d 1735 (TTAB Opposition No. 91181109 27 1991); aff’d unpub’d (Fed. Cir., June 5, 1992). In this case, the average consumer is any member of the general public who may buy or sell a house or condominium. In addition, although we must compare the marks in their entireties, one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749, (Fed. Cir. 1985) (“There is nothing improper in stating that, for rational reasons, more or less weight has been given to a particular feature of a mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.). Last, when marks would appear on even some identical services, as they do here, 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). With these principles in mind, we consider the marks and initially find that the letters “LFC” are the sole and/or dominant portion of all three of applicant’s marks. The upper level domain designation “.com” and the descriptive and disclaimed term “online” have no source indicating significance. Opposition No. 91181109 28 As for opposer’s mark, it consists of a crest design divided into four quadrants with the letter “L” positioned in the upper left quadrant and the letter “F” positioned in the lower right quadrant. The remaining two quadrants include a shield and crown design, respectively. Although the design elements are clearly noticeable, they are likely to be viewed as simply decorative and not source-indicating. It is the letters “LF” which make the more noticeable impression because the letters can be articulated and therefore purchasers will use the letters to request the services. Cf. In re Dakin’s Miniatures, Inc., 59 USPQ2d 1593 (TTAB 2001) (“words are normally accorded greater weight because they would be used by purchasers to request the goods”); and In re Appetito Provisions Co., 3 USPQ2d 1553 (TTAB 1987) (“if one of the marks [at issue] comprises both a word and a design, then the word is normally accorded greater weight because it would be used by purchasers to request the goods or services”)(citation omitted). In comparing the marks as to appearance, we note that the letters “LF” in opposer’s mark are displayed in upper case and in a particular font. However because applicant seeks registration of all of its marks in standard character format, we must consider the possibility that applicant’s marks may be presented in any reasonable manner of display, including in upper case lettering and in the same font Opposition No. 91181109 29 style. See Cunningham v. Laser Golf, supra, 55 USPQ2d at 1847-1848. Thus, we must assume the applicant’s marks and the “LF” portion of opposer’s mark could have a similar appearance. In articulating or speaking the marks, they are similar in sound insofar as the first two letters in applicant’s marks would be pronounced the same as the LF portion of opposer’s mark and because the design portion of opposer’s mark would not be articulated. As to connotation, we find the marks arbitrary, inasmuch as there is nothing in the record that indicates that the dominant portions of the parties’ respective marks, namely, the letters “LFC” in applicant’s marks and the letters “LF” in opposer’s mark, have any meaning or significance as applied to the services at issue in this case. It is settled that “confusion is more likely between arbitrarily arranged letters than between other types of marks.” Edison Brothers Stores, Inc. v. Brutting E.B. Sport-International GmbH, 230 USPQ 530, 533 (TTAB 1986). See also Dere v. Institute for Scientific Information, Inc. 420 F.2d 1068, 164 USPQ 347, 348 (CCPA 1970) (The Court stated “it is more difficult to remember a series of arbitrarily arranged letters than it is to remember figures, syllables, or phrases,” and further that “the difficulty of remembering such multiple-letter marks makes the likelihood Opposition No. 91181109 30 of confusion between such marks, when similar, more probable.”). Further, to the extent that the record shows any derivational significance of the letters in the parties’ respective marks, the derivations of letter marks and acronyms are of no particular significance. See B.V.D. Licensing Corp. v. Body Action Design Inc., 846 F.2d 727, 6 USPQ2d 1719, 1723 (Fed. Cir. 1988) (dissenting opinion, J. Nies) citing Aerojet-General Corp. v. Computer Learning & Sys. Corp., 170 USPQ 358, 362 (TTAB 1971) (fact that acronyms are derived from different words unimportant because average purchaser probably unaware of derivation). See also, authorities collected in Edison Brothers v. Brutting, supra. (“It should be noted that the lettered marks in almost all of the cited decisions were, as in the case before us, derived from the trade or corporate names of the involved parties, but these facts had no negative influence upon the likelihood of confusion conclusions which were reached.”). We are not persuaded by applicant’s contention that the design element in opposer’s mark set the parties’ marks apart. While the presence of the crest design lends something to opposer’s mark in terms of connotation which is not present in applicant’s marks, the letters “LF” in opposer’s mark dominate. As such, any contribution of the Opposition No. 91181109 31 design to the connotation and overall commercial impression would be outweighed by the dominant letters. For the reasons explained above, although there clearly are some differences in the marks in terms of appearance and sound, when considered in their entireties, we find applicant’s LFC, LFC.com and LFC ONLINE marks and opposer’s LF and crest design mark similar in appearance, sound, meaning and commercial impression. Applicant devoted much of its brief to the argument that there is no likelihood of confusion because the parties’ respective marks are not identical, i.e., that opposer has never used the letters “LFC” to identify the source of its services. We reiterate that the marks need not be identical (in whole or in part); they need only be sufficiently similar in terms of their overall commercial impressions such that confusion as to the source of the services offered under the respective marks is likely to result. Sealed Air Corp. v. Scott Paper Co., supra. We also note applicant’s argument that its marks can be distinguished from opposer’s mark because “opposer never uses the initials LF without also using the words ‘Long and Foster.’” This argument is unavailing. The issue of likelihood of confusion must be decided based upon a comparison of the marks as they appear in applicant’s applications vis-à-vis the mark as it appears in the Opposition No. 91181109 32 opposer’s pleaded registration. That is, we are not permitted to consider trade dress or any additional wording that may appear in connection with opposer’s rendering of its services. See Ultracashmere v. Spring Mills, 828 F.2d 1580, 4 USPQ2d 1252, 1254 (Fed. Cir. 1987). Moreover, there is nothing that prevents opposer from adopting and using more than one mark to identify the source of its services. Last, applicant’s argument that opposer’s LF and crest design mark “is undeniably weak as it is never used as a freestanding mark in the real estate context” is without merit. Simply stated, while opposer’s mark and applicant’s marks have some differences, the overall commercial impressions are very similar. Accordingly this du Pont factor favors opposer. Applicant’s Intent Opposer maintains that applicant “had knowledge of Long & Foster and the LF [and crest design] mark prior to filing the applications at issue,”22 and the record reflects such awareness. However, even if applicant knew of opposer’s mark prior to its adoption of the LFC marks, and there is nothing here that reflects such knowledge, mere knowledge of the mark does not establish that applicant adopted its marks in bad faith. Ava Enterprises, Inc. V. Audio Boss USA, 22 Opposer’s br. p. 25. Opposition No. 91181109 33 Inc., 77 USPQ2d 1783 (TTAB 2006). That being said, it is settled that one who adopts a mark similar to the mark of another for the same or closely related goods or services does so at his own peril. W.R. Grace & Co. v. Herbert J. Meyer Industries, Inc. 190 USPQ 308 (TTAB 1976). Actual Confusion Last, applicant contends that opposer has failed to identify one single act of actual confusion. Although we acknowledge that the parties’ marks have coexisted for many years, they primarily have coexisted in distinct geographical areas. As such, there has been no meaningful opportunity for confusion to have occurred between opposer’s mark and applicant’s marks. In sum, we find that in view of the similarity of the parties’ marks, the identical and closely related services, and the overlap in the parties’ trade channels and purchasers, a likelihood of confusion exist as to each of applicant’s marks. To the extent that any doubts regarding this conclusion might exist, such doubts must be resolved in favor of opposer, the prior user and registrant. See In re Hyper Shoppes (Ohio) Inc., 837 F.2d 840, 6 USPQ2d 1025, 1025 (Fed. Cir. 1988)(“Any doubts about likelihood of confusion, etc., under §2(d) must be resolved against applicant as the newcomer”; and Hewlett-Packard, 281 USPQ2d at 1003 (“This court resolves doubt about the likelihood of confusion Opposition No. 91181109 34 against the newcomer because the newcomer has the opportunity and obligation to avoid confusion with existing marks.”). Decision: The consolidated opposition is sustained and registration to applicant of application Serial Nos. 78905527, 78906366, 78906359, 78905526, 78903363 and 78903364 is refused. Copy with citationCopy as parenthetical citation