Murray

Trademark Trial and Appeal BoardMar 26, 2009

No. 77029078 (T.T.A.B. Mar. 26, 2009)

Hearing: Mailed: January 15, 2009 March 26, 2009 UNITED STATES PATENT AND TRADEMARK OFFICE ________ Trademark Trial and Appeal Board ________ In re Murray ________ Serial No. 77029078 _______ Andrew P Lahser of The Law Office of Andrew P. Lahser, PLC for Lisa H. Murray. Susan Kastriner Lawrence, Trademark Examining Attorney, Law Office 116 (Michael W. Baird, Managing Attorney). _______ Before Grendel, Rogers and Taylor, Administrative Trademark Judges. Opinion by Taylor, Administrative Trademark Judge: Lisa H. Murray has filed an application to register on the Principal Register the mark MY HASSLE FREE LISTINGS and design, shown below, for “real estate listing” in International Class 36.1 1 Application Serial No. 77029078, filed October 26, 2006, and alleging a bona fide intention to use the mark in commerce. The word “listings” has been disclaimed. The application also THIS OPINION IS NOT A PRECEDENT OF THE TTAB Ser No. 77029078 2 Registration has been finally refused under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on the ground that applicant’s mark is likely, when used in connection with the identified services, to cause confusion with the marks in Registration No. 2645701, HASSLE FREE LISTING (in typed format) for “real estate advertising services,”2 and Registration No. 3101565, HASSLE-FREE HOME SELLING (in standard character form) for “real-estate agency services.”3 When the refusals were made final, applicant appealed and requested reconsideration. On April, 14, 2008, the examining attorney denied the request for reconsideration and, on April 24, 2008, this appeal was resumed. Briefs includes the following color and description statements: “The color(s) black, gray, silver, and yellow is/are claimed as a feature of the mark.” “The mark consists of a multiple star design. The stars increase in size as they progress from the background to the foreground. The largest star appears directly behind the words ‘1st USA’.” A review of the record reveals, however, that the color statement is incomplete and the description is incorrect and contains improper language. The record shows applicant to have submitted the following statements: The colors black, gray, silver and yellow are claimed as a feature of the mark. The wording is in all black, the keys are in yellow, the key ring is silver and the background design is grey. The mark consists of house backdrop with Tradename and keys hanging off the tradename. Upon issuance of the final decision, the application file will be forwarded to the examining attorney for correction of these statements. 2 Issued November 5, 2002. The word “listing” has been disclaimed. 3 Issued June 6, 2006. The words “home selling” have been disclaimed. Ser No. 77029078 3 were filed by both applicant and the examining attorney. Applicant then requested remand of the application, which was denied. Applicant later filed a reply brief and an oral hearing was held. We reverse the refusals to register. Evidentiary Matter The examining attorney attached a number of dictionary and encyclopedia entries from online sources to her appeal brief and requested that the Board take judicial notice of this evidence. (Br. pp. 5 and 9, nn. 1 and 2). Applicant has objected to much of this newly submitted evidence as untimely and in an improper format, arguing that it prejudicially rebuts applicant’s assertions for the first time and is available only online. Applicant particularly objects to the information from the following websites: moneyglossary.com, thefreedictionary.com, realestatewords.com, investorwords.com and wikipedia.org. The Board may take judicial notice of dictionaries and encyclopedias, including online dictionaries and encyclopedias which exist in printed format. See In re Cyber Financial.Net., Inc., 65 USPQ2d 1789, 1791 n.3 (TTAB 2002). See also University of Notre Dame du Lac v. J.C. Gourmet Food Imports Co., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217 USPQ 505 (Fed. Cir. 1983). However, Ser No. 77029078 4 from our review of the attachments, none of the material retrieved from these online resources is available in “printed format,” nor was it introduced at a time when applicant could rebut the information. Accordingly, applicant’s objection is well taken and this evidence has not been considered.4 Discussion Our determination of the issue of likelihood of confusion is based on an analysis of all the probative facts in evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003). Each of these factors may, from case to case, play a dominant role. du Pont, 476 F.2d at 1361, 177 USPQ at 567. We turn first to a consideration of the services identified in the application and the cited registrations. The examining attorney maintains that applicant’s real estate listing services are highly related to, if not 4 We add that applicant did not object to the definitions of the words “advertise” and “hassle” taken from sources also available in printed format, i.e., Cambridge Dictionaries Online at http://dictionary.cambridge.org (advertise), and Encarta® World English Dictionary (2007) at http://encarta.msn.com (hassle), and we take judicial notice of these definitions. Ser No. 77029078 5 encompassed by, registrants’ real estate agency and real estate advertising services. Applicant does not argue otherwise. Indeed, applicant’s brief is silent with regard to this factor. In addition, the examining attorney submitted copies of numerous use-based, third-party registrations to show that various trademark owners have adopted a single mark for services of the kind that are identified in applicant’s application and the cited registrations, i.e., real estate listing, real estate advertising and real estate agency services. While these registrations are admittedly not evidence of use of the marks in commerce, they are sufficient to suggest that these services are ones which might be provided by a single entity and offered to the public under the same mark. See In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988); and In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993). The examining attorney also made of record excerpts from several websites showing that often the same entity that provides real estate listing services also provides real estate advertising and/or real estate agency services, and that these services are often provided in tandem with one another. We find that the third-party registrations and third party uses are sufficient to demonstrate that real estate Ser No. 77029078 6 listing, real estate advertising and real estate agency services are highly related, if not overlapping, services. Further, in the absence of any limitations to the services recited in applicant’s application and the cited registrations, we must presume that they will be offered in all the usual channels of trade for such services and will be offered to and purchased by all of the usual classes of purchasers, including the general public seeking to sell or purchase real estate. See In re Elbaum, 211 USPQ 639, 640 (TTAB 1981). In view of the above, the du Pont factors of relatedness of the services, channels of trade and classes of customers favor a finding of likelihood of confusion. Although applicant does not dispute that the services are related or that the same purchasers will encounter its services as well as those of registrants, applicant contends that because of the high fees involved in real estate transactions, purchasers are likely to exercise a high degree of care in their purchasing decisions. We agree. In view of the expense involved in buying or selling a home, even ordinary purchasers or sellers of a home are going to exercise some degree of care in choosing providers of services to facilitate these transactions. This factor accordingly favors applicant. Ser No. 77029078 7 We now compare applicant’s mark MY HASSLE FREE LISTING (and design) and registrants’ marks HASSLE FREE LISTINGS and HASSLE-FREE HOME SELLING. In determining whether or not these marks are similar, we must consider them in their entireties in terms of sound, appearance, meaning and commercial impression. See Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005). 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 their entireties that confusion as to the source of the services offered under the respective marks is likely to result. The examining attorney maintains that applicant’s mark and the registrants’ marks are similar in appearance, sound, connotation and commercial impression due to the common term “HASSLE FREE,” which dominates all three marks. In urging that the refusals be reversed, applicant maintains that her mark contains distinctive elements which create their own commercial impression and serve to distinguish her mark from the cited marks. This is so, applicant essentially argues, because third-party use in commerce of additional marks including the term “hassle free” for similar services show that purchasers may already Ser No. 77029078 8 be differentiating between many, highly similar marks such that the term “hassle free” is weak and entitled to only a narrow scope of protection. In support of the argument regarding the numerous uses of the words “HASSLE FREE” in connection with a variety of real estate services, applicant has submitted: (i) a list of the top 100 hits from a search of the Google search engine showing usage of the term “hassle free listing,” many of which include, as shown below by way of example, use by third parties of the term “HASSLE FREE” as part of a trademark or trade name, Spokane Real Estate – The Hassle Free Listing Spokane Real Estate Please register for your Free “Hassle Free Listing” Information …. (www.thehasslefreelisting.com) Free, Listingtrade, Have, Hassle, Listing /Hassle Free Listing… Put more money in your pocket with the Hassle Free Listing™, exclusively from Steve McEnelly and Chris Olson. (whenitmattersmost.com) The Morawski Team-Home of the Hassle-Free Guarantee! Take advantage of our “Hassle-Free Listing”, investigate our qualifications and then give us a Call. We look forward to working with you!... (www.themorawskiteam.com) Ser No. 77029078 9 Reno, Nevada – Erick Harpole’s Hassle Free Listing System To receive free information on Erick Harpole’s Hassle Free Listing, please fill out the form mailed below. …. (hasslefreelistingsystem.com) Long Beach CA Real Estate, Lakewood Real Estate, Orange County… With our Hassle Free Guaranteed Listing Program you can have complete flexibility .... from “Full Service” to “Do IT Yourself.”… (www.calhomesearch.com) A real estate and property search site for Michelle MacKay Please contact me today to find out how you will benefit from my “Hassle Free Listing” service approach. There are eight good reasons why you will benefit … (www.mackayteam.com) April Fontana – Your #1 Source For Hassle Free Listings Get the best homes, expert advice, residential listings … (www.aprilfontana.com) Pismo Beach, San Luis Obispo, and Arroyo Grande California real… Our Hassle-Free Listing Plan See the advantages of listing your home with us using our Hassle- Free Listing Plan. Designed to save YOU money. … (www.pismocoastliving.com) Real Estate – Denver, CO – Hottest Homes Realty Welcome to Hassle Free Listing! Hassle Free Listing is [a] real estate office located in Denver, Colorado. We specialize in buying and selling real estate while … (storefront.dexonline.com) List your home & pay 0 commission – No Hassle – Hassle-Free Please send me the FREE no-obligation information on the “No Bull/Hassle Free Home Sale” program Or if you prefer call 703-858-1118 (www.novasellertips.com) Ser No. 77029078 10 SellingHassleFree.com Our Selling Hassle Free Marketing System offers benefits that the ordinary … Q: If we list with you, will we be on the Multiple Listing Service (MLS)? … (sellinghasslefree.com); (ii) a report generated from a search of the Google database entitled “Google AdWords: Keyword Tool”; (iii) electronic copies of several third-party registrations for marks showing use of the term “hassle” with a negating prefix/suffix in connection with real estate services, including the two cited marks as well as the marks THE NO HASSLE LISTING, NO HASSLE, CASTLES WITHOUT HASSLES and THE WORRY FREE LISTING; and (iv) an article entitled “Real Estate Debrief” taken from the loose-leaf subscription Star Power Club circulated to real estate professionals.5 While we do not find all of applicant’s evidence persuasive,6 the Google hit list evidence, even in its 5 Applicant’s brief references an accompanying soundtrack on CD- Rom which, among other things, explains how to use the sample forms, scripts and sample advertisement included in the article. It appears, however, that the disc was never filed with the Trademark Examining Operation. Its absence, however, does not affect our decision. 6 On this point, we note that that neither the third-party registrations nor the results from the Google AdWords: Keyword Tool search are probative as to the extent of third-party use of the term “hassle free.” As regards the third-party registrations Ser No. 77029078 11 abbreviated form, demonstrates that there is, indeed, widespread use in the real estate industry of the term HASSLE FREE. “Evidence of widespread third-party use, in a particular field, of marks containing a certain shared term is competent to suggest that purchasers have been conditioned to look to the other elements of the marks as a means of distinguishing the source of the goods or services in the field.” In re Broadway Chicken Inc., 38 USPQ2d 1559-1566 (TTAB 1996). See also, Steve’s Ice Cream v. Steve’s Famous Hot Dogs, 3 USPQ2d 1477, 1479 (TTAB 1987); which are all are for real estate related services, besides the two cited registrations, none are for marks that contain the term “hassle free.” Those two registrations are simply not sufficient to show that the term is weak or that it has some suggestive meaning in the field of real estate. As regards the “Google AdWords: Keyword Tool” search report, the term “descriptive words or phrases” was checked in response to the query “[h]ow would you like to generate keyword ideas?.” The results show in one column the terms that were searched, e.g., hassle free listing, hassle free listings, hassle free real estate, hassle free home selling, no hassle listing, no cost listing and, in another, a partially shaded, rectangular-shaped box (the more frequent the searches, the more shaded the rectangle) to purportedly show “the historical average number of searches by month for each of the search terms listed ….” (Br. pp 9-10, Exhibits to Req for recon). However, the report does not contain any contextual information regarding the search. Indeed, as applicant notes, “the report does not show the number of times the search is performed each month, but it does show the relative frequency of each term compared to every other term.” (Br. p. 10). We find in the absence of contextual information, this report has little probative value. See In re Remacle, 66 USPQ2d 1222, n2 (TTAB 2002)(“The Examining Attorney’s print-out of the results of an Internet search by the Yahoo search engine are of little probative value, largely because insufficient text is available to determine the nature of the information and, thus, its relevance.”). See also TBMP § 1208.03 (2d ed. rev. March 2004); In re Fitch IBCA, Inc., 64 USPQ2d 1058, 1060 (TTAB 2002). Ser No. 77029078 12 and Color Key Corp. v. Color Associates, Inc., 219 USPQ 936, 943 (TTAB 1983). Moreover, the article entitled “REAL ESTATE DEBRIEF” suggests that the term “hassle free listing” is popular in the real estate industry because it is evocative of a type of specialized real estate service which features flexibility in the listing arrangement. In a sample advertisement featured in the article, the copy states, in pertinent part (emphasis in original): www.TheHassleFreeListing.com Put more money in your pocket with The Hassle Free Listing, exclusively with The Hardie Group, Inc. Most Brokers will charge you the same fee no matter how your home sells … even if you find the buyer. With The Hassle Free Listing you have complete flexibility .... from “Full Service” to “Do it Yourself”. Given the widespread use and suggestive nature of the term “HASSLE FREE” in the real estate industry, purchasers are accustomed to looking at other elements of “HASSLE FREE” marks to make distinctions between the marks. Therefore, we cannot say that the words “HASSLE FREE” dominate over the remaining words or the prominent design feature in applicant’s mark. Nor are we surprised that the two cited registrations, owned by different entities, have co-existed on the register. Ser No. 77029078 13 When we compare applicant’s mark to the cited marks HASSLE FREE LISTING and HASSLE-FREE HOME SELLING, in their entireties, as we must, we find that there are sufficient differences in these marks to distinguish them. As regards applicant’s mark vis-à-vis the mark HASSLE FREE LISTINGS, while we recognize that the literal portion of applicant’s mark includes the wording of the cited mark virtually in its entirety, and that the wording in registrant’s mark could theoretically be displayed in the same stylizations as those used in applicant’s mark, the additional wording and design present in applicant’s mark obviate the similarities. More particularly, although the wording in applicant’s mark is somewhat graduated in size, with the words “hassle” and “free” being larger than the words “my” and “listings,” the words “my” and “listing” are in one stylization and the words “hassle” and “free” are in another. Because of this difference in text styles, purchasers may perceive the wording of the mark as “MY LISTINGS HASSLE FREE” instead of “MY HASSLE FREE LISTINGS,” and focus on the term “MY LISTINGS.” However perceived, the first word of the literal portion of applicant’s mark is “MY,” and, as often stated, the first word of a compound mark is often more likely to make a stronger impact on Ser No. 77029078 14 consumers and the way they remember the mark. See Wet Seal Inc. v. FD Mgmt. Inc., 82 USPQ2d 1629, 1639 (TTAB 2007). Accordingly, we find that the marks differ, slightly, in sound and more significantly in appearance. We also find that the marks differ in overall commercial impression due to this difference in wording coupled with the distinctive house, key ring and yellow-colored set of keys design present in applicant’s mark. We note, too, that appearance and overall commercial impression are significant factors in this case, when evaluating the marks, because properties for sale typically have a large visual sign posted to attract the attention of passersby. Although we agree with the examining attorney that the connotations of the marks are, if not the same, very similar, we nonetheless find that on the whole the differences outweigh the similarities given the weakness of the common element. See Sure-fit Products Co. v. Saltzson Drapery Co., 254 F.2d 158, 117 USPQ 295 (CCPA 1958)(where a party has a weak mark, competitors may come closer to the mark than would be the case with a strong mark without violating the party’s rights; marks SURE-FIT and RITE-FIT, both for slip-covers, held not confusingly similar). See also King Candy Co. v. Eunice King’s Kitchen, Inc., 182 USPQ 108, 110 (CCPA 1974)(confusion unlikely when marks are Ser No. 77029078 15 of such non-arbitrary nature that the public easily distinguishes slight differences in the marks under consideration). This is especially true here, where the common purchasers of the services will exercise care in their purchasing decisions, are accustomed to seeing the term HASSLE FREE used in connection with real estate services and would not assume that the services come from a common source simply because the term HASSLE FREE appears in both marks. As regards a comparison of applicant’s mark and the cited mark HASSLE-FREE HOME SELLING, for the same reasons discussed above, we find the differences in the literal portions of the marks significant, notwithstanding the disclaimers – as disclaimed matter must be considered with the rest of the mark as a whole in assessing the similarity between the marks. See Giant Food, Inc. v. Nation’s Foodservice, 710 F.2d 1565, 218 USPQ2d 390, 395 (Fed. Cir. 1983) (“it is well settled that the disclaimed material still forms a part of the mark and cannot be ignored in determining likelihood of confusion.” (citations omitted). In conclusion, we find that despite that relatedness of the services and channels of trade and customers, applicant’s mark and the cited marks are sufficiently dissimilar, particularly in view of the weak nature of the Ser No. 77029078 16 common element HASSLE FREE and the nature of the related real estate services, which are purchased with care, such that confusion is not likely between applicant’s MY HASSLE FREE LISTING and design mark and registrants’ HASSLE FREE LISTINGS and HASSLE-FREE HOME SELLING marks. Decision: The refusals to register under Section 2(d) of the Trademark Act are reversed.