Long and Foster Companies, Inc.v.LFC Corporate Services, Inc.

Trademark Trial and Appeal Board

Sep 28, 2010

No. 91181109 (T.T.A.B. Sep. 28, 2010)

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.