The Homestead Mortgage Co.

Trademark Trial and Appeal Board

Jul 11, 2001

No. 75487987 (T.T.A.B. Jul. 11, 2001)

7/11/01
Paper No. 12
PTH
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re The Homestead Mortgage Company
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Serial No. 75/487,987
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Steven L. Permut of Reising, Ethington, Barnes, Kisselle,
Learman & McCulloch for The Homestead Mortgage Company.
Michael P. Keating, Trademark Examining Attorney, Law
Office 107 (Thomas S. Lamone, Managing Attorney).
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Before Seeherman, Hairston and Chapman, Administrative
Trademark Judges.
Opinion by Hairston, Administrative Trademark Judge:
An intent-to-use application has been filed by The
Homestead Mortgage Company to register the mark HOMESTEAD
USA (“USA” is disclaimed) for “mortgage lending and
mortgage brokerage services.”1
Registration has been refused by the Trademark
Examining Attorney pursuant to Section 2(d) of the
Trademark Act, 15 U.S.C. 1052(d), on the ground that the
1 Serial No. 75/487,987 filed May 19, 1998.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Ser No. 75/487,987
2
use of applicant’s mark for the identified services would
be likely to cause confusion with the registered mark
HOMESTEAD MORTGAGE (“MORTGAGE” is disclaimed) for “mortgage
brokerage services.”2
Applicant has appealed. The case has been fully
briefed, but no oral hearing was requested. We affirm the
refusal of registration.
Our determination is based on an analysis of all of
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). In any likelihood
of confusion analysis, two key considerations are the
similarities between the marks and the similarities between
the services. Federated Foods, Inc. v. Fort Howard Paper
Co., 544 F.2d 1098, 192 USPQ 24 (CCPA 1976).
Turning first to the respective services, applicant’s
mortgage lending and mortgage brokerage services are
identical in part and otherwise closely related to
registrant’s mortgage brokerage services. Applicant does
not dispute this, but concentrates its arguments on
asserted differences in the marks.
We turn then to a consideration of the marks, keeping
in mind the well-established principle that when marks
2 Registration No. 1,961,295 issued March 12, 1996.
Ser No. 75/487,987
3
would appear on virtually identical goods or services, 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).
In this case, we agree with the Examining Attorney
that, when compared in their entireties, applicant’s and
registrant’s marks are substantially similar in commercial
impression. In considering the marks, we recognize that
the disclaimed portion of each mark cannot be ignored.
Giant Food, Inc. v. National Food Service, Inc., 710 F.2d
1565, 218 USPQ 390 (Fed. Cir. 1983). However, there is
nothing improper in giving more weight, for rational
reasons, to a particular feature of a mark. Here, we have
given more weight to the HOMESTEAD portion of both
applicant’s and registrant’s marks because of the
descriptive nature of the remaining terms in the marks,
i.e., USA and MORTGAGE. In re National Data Corp., 753
F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Not only are
customers most likely to remember the HOMESTEAD portion of
the marks, but they may not even notice that the marks
differ in their ending portions. Persons who are familiar
with registrant’s HOMESTEAD MORTGAGE mark for mortgage
brokerage services would be likely, upon seeing the mark
Ser No. 75/487,987
4
HOMESTEAD USA for the identical and closely related
services, to assume that HOMESTEAD USA is a variant of the
registrant’s mark, perhaps adopted to suggest that the
services originate in the United States.
In reaching our decision herein, we have not
overlooked applicant’s argument that marks containing the
word HOMESTEAD are weak marks which are therefore entitled
to only a limited scope of protection. Specifically,
applicant maintains that the word HOMESTEAD is so
frequently used in marks for financial services that no one
party may claim exclusive rights to HOMESTEAD used in
connection with such services. In support of its
contention, applicant points to Registration Nos. 1,871,563
and 1,900,895, both for the mark HOMESTEAD FUNDS, INC. for
mutual fund investment. These registrations were initially
cited by the Examining Attorney, but were subsequently
withdrawn.
As often stated, third-party registrations are of
little weight in determining likelihood of confusion
issues. In re Hub Distributing, Inc., 218 USPQ 284 (TTAB
1983). They are not evidence of use of the marks shown
therein and they are not proof that consumers are familiar
with such marks so as to be accustomed to the existence of
similar marks in the marketplace. National Aeronautics and
Ser No. 75/487,987
5
Space Administration v. Record Chemical Co., 185 USPQ 563
(TTAB 1975).
While we reject applicant’s “weak” argument, we
nonetheless recognize the suggestive significance of the
word HOMESTEAD as used in connection with mortgage lending
and mortgage brokerage services. The word suggests that
the services are offered for the purchase of homes.
However, this fact does not help to distinguish HOMESTEAD
MORTGAGE and HOMESTEAD USA. The word HOMESTEAD, as used in
both marks, conveys the same suggestive significance, and
the additional words MORTGAGE and USA do not change the
commercial impression of the marks.
Decision: The refusal to register under Section 2(d)
of the Trademark Act is affirmed.