Quarry Falls, LLC

Trademark Trial and Appeal Board

May 22, 2012

No. 77928112 (T.T.A.B. May. 22, 2012)

THIS OPINION IS A
PRECEDENT OF THE TTAB
THIS OPIN ON IS NOT A

Mailed: May 22, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Quarry Falls, LLC
________

Serial No. 77928112
_______

Katherine M. Hoffman of Luce, Forward, Hamilton & Scripps
LLP for Quarry Falls, LLC

David Eric Yontef, Trademark Examining Attorney, Law Office
105 (Tom Howell, Managing Attorney).
_______

Before Zervas, Wolfson, and Shaw, Administrative Trademark
Judges.

Opinion by Wolfson, Administrative Trademark Judge:

Quarry Falls, LLC (“applicant”) has filed an
application for the mark CIVITA (in standard character
format) for “real estate development, namely, development
of a mixed-use community” in International Class 37.1
The examining attorney has refused registration of
applicant’s mark under Section 2(d) of the Trademark Act, 15

1 Filed February 4, 2010 on the basis of applicant’s bona fide
intent to use the mark in commerce.
Serial No. 77928112

U.S.C. §1052(d), having determined that registration would
lead to a likelihood of confusion in view of the services
recited in the following registrations:
Reg. No. 2371965 for the mark CIVITAS (in
standard character format) for “landscape
architecture, and urban planning and design” in
International Class 42;2

Reg. No. 3242647 for the mark SEVITA (in standard
character format) for, inter alia, “financial
management, financial planning, financial
portfolio management, financial consultation,
monetary exchange, real estate acquisition
services, real estate agencies, real estate
brokerage, real estate consultancy; financial
consulting; capital investment; financial
analysis” in International Class 36;3 and

Reg. No. 3245112 for the mark for the
same services as recited in Reg. No. 3242647.4

I. Applicable Law
Our determination under Trademark Act § 2(d) is based
on an analysis of the probative facts in evidence that are
relevant to the factors bearing on the likelihood of
confusion. See In re E.I. du Pont de Nemours & Co., 476

2 Registered August 1, 2000; Section 8 (10-year) accepted/Section 9
granted; renewed.
3 Registered May 15, 2007 under Trademark Act § 66(a), 15 U.S.C.
§ 1141(f). The registration also covers the following services
in International Class 35: “business management; business
administration; procurement and purchasing services, namely,
purchasing commercial goods and investment goods as well as
unworked and semi-finished products for others; sales promotion
services; business organization and management consulting,
professional business consulting, cost price analysis, business
inquiries.”
4 Registered May 22, 2007 under Trademark Act § 66(a), 15 U.S.C.
§ 1141(f).
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Serial No. 77928112

F.2d 1357, 177 USPQ 563 (CCPA 1973); see also Palm Bay
Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En
1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re
Majestic Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003); and In re Dixie Rests. Inc., 105
F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering
the evidence of record on these factors, we keep in mind
that “[t]he fundamental inquiry mandated by Section 2(d)
goes to the cumulative effect of differences in the
essential characteristics of the goods and differences in
the marks.” Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); see also
In re Azteca Rest. Enters., Inc., 50 USPQ2d 1209 (TTAB
1999).
II. Discussion
A. Similarity or Dissimilarity of the Marks CIVITA and
CIVITAS in Their Entireties

In a likelihood of confusion analysis, we compare the
marks for similarities and dissimilarities in appearance,
sound, connotation and commercial impression. Palm Bay, 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 impression that confusion
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Serial No. 77928112

as to the source of the goods or services offered under the
respective marks is likely to result. See H.D. Lee Co. v.
Maidenform Inc., 87 USPQ2d 1715, 1727 (TTAB 2008); and
Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB
1975). The average purchaser normally retains a general
rather than a specific impression of trademarks.
Applicant’s mark CIVITA and the registered mark
CIVITAS are quite similar in appearance, pronunciation,
connotation and commercial impression. Turning first to
the meaning of the marks, although neither party submitted
a dictionary definition for either mark, the Board takes
judicial notice of the fact that the word CIVITAS is a word
in the English language that means “a body of people
constituting a politically organized community : STATE; esp
: CITY-STATE.”5 Likewise, applicant’s mark CIVITA has been
adopted by applicant to “suggest[] to consumers the image
of community and civics - a neighborhood for families and
businesses.” Applicant’s Brief, p. 4. In this regard,
CIVITA and CIVITAS equally suggest the image of community
and civics.

5 Webster’s Third New International Dictionary (1986). The Board
may take judicial notice of dictionary definitions. See
University of Notre Dame du Lac v. J. C. Gourmet Food Imports
Co., Inc., 213 USPQ 594 (TTAB 1982), aff’d, 703 F.2d 1372, 217
USPQ 505 (Fed. Cir. 1983).
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Serial No. 77928112

In appearance, both applicant’s mark and the mark in
the cited registration begin with the same two-syllable,
five letter string - “civit.” The only visual difference
between the marks is the final letter “s” at the end of the
registered mark, which is only a slight difference in
appearance when the marks are considered as a whole.
In terms of pronunciation, because the marks consist
of the same root term, it is reasonable to pronounce CIVITA
in a very similar manner to CIVITAS despite the presence of
the final letter “s” in the registrant’s mark. Moreover,
there is no correct pronunciation of a mark. Eveready
Battery Co. v. Green Planet Inc., 91 USPQ2d 1511, 1518
(TTAB 2009). See also In re Microsoft Corp., 68 USPQ2d
1195, 1199 (TTAB 2003)(it is not possible to control how
consumers will vocalize marks).
In terms of overall commercial impression, the marks
are strikingly similar. Consumers are likely to view the
marks as variations of each other that both point to the
same source.
Accordingly, the first du Pont factor favors a finding
of likelihood of confusion between the applicant’s mark
CIVITA and the cited mark CIVITAS.
B. Similarity of the Services - CIVITA and CIVITAS

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Serial No. 77928112

Applicant intends to use its mark in association with
“real estate development, namely, development of a mixed-
use community.” The recitation of services in registration
No. 2371965 for the mark CIVITAS is “landscape
architecture, and urban planning and design.” It is well
settled that the question of likelihood of confusion must
be determined based on an analysis of the goods or services
recited in applicant’s application vis-à-vis the goods or
services identified in the cited registration(s). See In
re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1690 n.4
(Fed. Cir. 1993); Canadian Imperial Bank v. Wells Fargo
Bank, 811 F.2d 1490, 1 USPQ2d 1783 (Fed. Cir. 1987); and
Paula Payne Products v. Johnson Publishing Co., 473 F.2d
901, 177 USPQ 76, 77 (CCPA 1973) (“Trademark cases
involving the issue of likelihood of confusion must be
decided on the basis of the respective descriptions of
goods.”). Here, the record supports a finding that the
services are related.
The examining attorney has made of record several use-
based registrations for marks that include both the
services of “real estate development” and “landscape
architecture” and/or “urban planning.” Although such
registrations are not evidence that the marks shown therein
are in use or that the public is familiar with them, they
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Serial No. 77928112

nonetheless have probative value to the extent that they
serve to suggest that the goods listed therein are of a
kind which may emanate from a single source under a single
mark. See In re Davey Products Pty Ltd., 92 USPQ2d 1198,
1203 (TTAB 2009); In re Albert Trostel & Sons Co., 29
USPQ2d 1783 (TTAB 1993); and In re Mucky Duck Mustard Co.
Inc., 6 USPQ2d 1467 (TTAB 1988).
The following examples are illustrative:6
1. Reg. No. 3586971 for the mark KOBI KARP for
“landscape architectural design services,” “real
estate development services” and “planning,
laying out and custom construction of
residential, commercial, and mixed-use
properties.”

2. Reg. No. 3650350 for the mark DYNAMICA for “land
development services, namely, planning and laying
out of residential and/or commercial communities”
and “urban planning.”

3. Reg. No. 2567079 for the mark KMD ARCHITECTS AND
PLANNERS for “strategic planning and consultation
for business administration and management in the
fields of architecture, urban design and
planning, and land use” and “real estate and land
development services, namely planning and laying
out of residential and/or commercial
communities.”

4. Reg. No. 2648792 for the mark INTERPLAN PUERTO
RICO for “architectural design and urban planning
services” and “real estate development and
construction management services.”

5. Reg. No. 3651736 for the mark INTEGRATEDESIGN
for “land development services, namely, planning

6 These were provided with the initial and final Office actions.
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Serial No. 77928112

and laying out of residential and/or commercial
communities” and “urban planning services.”

6. Reg. No. 3665542 for the mark ARCHITECTURE& for
“urban design, namely, the design of towns and
cities; urban planning” and “real estate
development consultation.”

7. Reg. No. 3479780 for the mark MESQUITE TEXAS for
“community land development services in the
nature of planning and laying out of residential
and/or commercial communities” and “city planning
services in the nature of urban planning.”

8. Reg. No. 3796757 for the mark VERIGREEN for “real
estate development and site planning” and
“landscape architectural design.”

9. Reg. No. 3599689 for the mark LIVING WELL BY
DESIGN for “real estate development” and
“landscape design services.”

10. Reg. No. 3427330 for the mark URBAN for
“landscape architectural design” and “land
development services, namely, planning and
laying out of residential and commercial
communities.”

11. Reg. No. 2547925 for the mark WILSONMILLER for
“land development services,” “landscape
gardening services” and “urban planning.”

12. Reg. No. 2212518 for the mark EDAW for “land
development services, namely, planning and
laying out of residential, commercial and
institutional communities, parks, monuments,
memorials and historic sites and districts,”
“landscape architecture” and “urban planning.”

These third-party registrations support a finding that
applicant’s real estate development services and
registrant’s urban planning and landscape architecture
services are related for purposes of the second du Pont
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Serial No. 77928112

factor. As further support, the examining attorney
submitted copies of articles from the Lexis/Nexis database
with his denial of applicant’s request for reconsideration.
While most of this evidence is not probative inasmuch as it
deals with course offerings, degrees, or jobs worked by
several individuals, two of the articles support the
conclusion that companies offer both real estate
development and landscape architecture services.
1. 2010 - States News Service article entitled
“Yaggy Colby Associates to participate in
Wisconsin’s Green Tier Program” describes its
services as:
YCA is a multi-disciplinary consulting firm
that provides municipal and real estate
development services, including engineering,
surveying, planning, landscape architecture,
architecture, and environmental assistance
for public and private sector clientele.

2. 1990 - Times Publishing Company, St.
Petersburg Times (Florida), article entitled
“Who’s News” describes the firm “ARHI-TECTURA” as
an “architectural, landscape, architecture and
real estate development services firm.”
Applicant argues that because registrant does not use
its mark “as the name of any of its projects, in contrast
to the manner in which applicant uses its mark as the name
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Serial No. 77928112

of its community,” confusion is unlikely. Applicant’s
Brief p. 6. This argument is unavailing. An applicant may
not restrict the scope of the goods covered in the cited
registration by argument or extrinsic evidence. In re La
Peregrina Ltd., 80 USPQ2d 1645, 1646-47 (TTAB 2008). Based
on the recitations in the cited registration and
applicant’s application, and the evidence of record
suggesting that services provided by both registrant and
applicant may emanate from a single source, we find that
applicant’s services are related to the services recited in
Reg. No. 2371965 for the mark CIVITAS.
The second du Pont factor favors a finding of
likelihood of confusion.
III. Conclusion

We have carefully considered the entire record and all
arguments. We conclude, in light of the similarity of the
marks at issue and the related nature of the services, that
use of applicant’s mark in association with “real estate
development, namely, development of a mixed-use community”
is likely to cause confusion with the mark CIVITA in cited
Reg. No. 2371965.
Because we have determined that a likelihood of
confusion exists between applicant’s mark and the mark in
Reg. No. 2371965, we need not reach the issue of whether
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Serial No. 77928112

there is a likelihood of confusion between applicant’s mark
and the marks in cited Reg. Nos. 3245112 and 3242647.
Decision: The refusal to register under Trademark Act
§ 2(d) is accordingly affirmed as to the mark CIVITAS in
Reg. No. 2371965.

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