WebMagic Ventures, LLCv.DD Apartments, LLC dba Deep Discount Apartments

Trademark Trial and Appeal Board

Nov 30, 2012

No. 91198157 (T.T.A.B. Nov. 30, 2012)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: November 30, 2012

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

WebMagic Ventures, LLC

v.

DD Apartments, LLC dba Deep Discount Apartments
_____

Opposition No. 91198157
to application Serial No. 85076737
filed on July 2, 2010
_____

Dana M. Stangel of Oppedahl Patent Law Firm LLC for WebMagic Ventures, LLC.

Lawrence E. Laubscher Jr. of Laubscher Laubscher PC for DD Apartments, LLC.
dba Deep Discount Apartments.
_____

Before Bucher, Lykos and Greenbaum, Administrative Trademark Judges.

Opinion by Greenbaum, Administrative Trademark Judge:

Applicant, DD Apartments, LLC dba Deep Discount Apartments, seeks
registration of the mark DD APTS in standard characters on the Principal Register
for services identified as
[p]roviding a searchable online advertising website and
informational guide featuring the goods and services of
other vendors via the internet in the field of apartment
rentals; [p]roviding an interactive real estate website
which promotes housing and apartment properties
through offering prospective tenants video walk throughs,
property descriptions, text, price, location, maps and other
Opposition No. 91198157

2

information that would be influential to a prospective
tenant in making a rental decision
in International Class 35. The application was filed based on a bona fide intention
to use the mark in commerce under Section 1(b) of the Trademark Act, 15 U.S.C.
§ 1052(b), and includes a disclaimer of the term “APTS”.
Opposer, WebMagic Ventures, LLC, opposes the registration of applicant’s
mark on the ground that, as applied to applicant’s services, the mark so resembles
opposer’s previously used mark DD for various advertising and information
services, including in the field of apartment rentals, as to be likely to cause
confusion under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d). Opposer
alleges ownership of application Serial No. 85098375 for the mark DD for such
services, including “[p]roviding a searchable on-line advertising website and guide
featuring the goods and services of other vendors via the Internet” and “[s]hoppers’
guide information” in International Class 35,1 which has been suspended because of
a potential likelihood of confusion with applicant’s prior-filed application herein.
Opposer also alleges that it has owned the domain name dd.com since March 17,
1998, and that it offers its advertising services on the website http://www.dd.com/
which it operates.
Applicant, in its answer, denied the salient allegations in the notice of
opposition, and asserted several “affirmative defenses” which were not pursued at
trial. The “affirmative defenses” are deemed to have been waived and are given no
further consideration.

1 Claiming March 17, 1998 as the date of first use and first use in commerce under
Trademark Act Section 1(a), 15 U.S.C. § 1051(a).
Opposition No. 91198157

3

The Record
The record includes the pleadings and, by operation of Trademark Rule
2.122(b), 37 C.F.R. § 2.122(b), applicant’s application file. In addition, opposer
submitted the testimony deposition on written question, of Greg McLemore,
opposer’s CEO, President and Managing Member, with accompanying exhibits.
One of the exhibits is a copy of opposer’s application for the mark, DD. Opposer also
submitted a notice of reliance which introduced into the record applicant’s
responses to certain of opposer’s First Request for Admissions. Applicant did not
introduce any testimony or evidence during its testimony period, nor did applicant
file a brief.
Standing
Standing is a threshold issue that must be proven in every inter partes case.
See Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185, 189
(CCPA 1982). To establish standing in an opposition, an opposer must show that it
has a “real interest” in the outcome of the proceeding; that is, that it has a direct
and personal stake in the outcome of the opposition. See Ritchie v. Simpson, 170
F.3d 1092, 50 USPQ2d 1023 (Fed. Cir. 1999); Jewelers Vigilance Committee, Inc. v.
Ullenberg Corp., 823 F2d 490, 2 USPQ2d 2021 (Fed. Cir. 1987).
Opposer has shown, by a TARR printout, that it filed application Serial No.
85098375 for the mark DD for various advertising and information services,
including in the field of apartment rentals, in International Class 35, and that this
application has been suspended by an Office action which raises the involved
Opposition No. 91198157

4

application of this proceeding as a potential bar to registration.2 In addition,
opposer’s witness has testified as to opposer’s use of the mark DD for advertising
and information services, including in the field of apartment rentals and associated
services, primarily provided through data communication networks, and its
continuing intent to use this mark.3 Opposer also submitted various other
materials as exhibits to the McLemore Deposition that show use of the mark DD in
connection with advertising and information in the field of apartment rentals, and
related services. In addition, applicant does not contest opposer’s standing.
In view thereof, opposer has shown it has a real interest in this proceeding,
and has demonstrated its standing to pursue this opposition. See Tri-Star
Marketing, LLC v. Nino Franco Spumanti S.R.L., 84 USPQ2d 1912, 1914 (TTAB
2007) (“petitioner has standing to bring the petition for cancellation based on the
fact that its application to register [its mark] was refused registration by the office
under Section 2(d) based on a likelihood of confusion with respondent’s previously
registered mark”). See also Cunningham v. Laser Golf Corp., 222 F.3d 943, 55
USPQ2d 1842 (Fed. Cir. 2000); Lipton Industries, Inc. v. Ralston Purina Co., 670
F.2d 1024, 213 USPQ 185 (CCPA 1982).
Priority
Opposer has not pleaded any registrations and, therefore, must rely on its
common law use to prove its priority. Inasmuch as applicant has not established
use of its mark in connection with its services prior to the filing date of its

2 McLemore Dep., pp. 17-18; Exh. 22 and 23.
3 McLemore Dep., pp. 8-9,
Opposition No. 91198157

5

application, the earliest date upon which applicant may rely for priority purposes is
July 2, 2010. Zirco Corp. v. American Telephone and Telegraph Co., 21 USPQ2d
1542, 1544 (TTAB 1991) (“[T]here can be no doubt but that the right to rely upon
the constructive use date comes into existence with the filing of the intent-to-use
application and that an intent-to-use applicant can rely upon this date in an
opposition brought by a third party asserting common law rights.”). Thus, in order
to establish priority, opposer must show that it used its mark in connection with its
services prior to July 2, 2010.
In a case involving common law rights, “the decision as to priority is made in
accordance with the preponderance of the evidence.” Hydro-Dynamics Inc. v.
George Putnam & Company Inc., 811 F.2d 1470, 1 USPQ2d 1772 (Fed. Cir. 1987).
We find that the evidence that opposer submitted amply supports its earlier priority
date.
First, in his January 13, 2012 deposition, opposer’s witness, Mr. McLemore,
testified unequivocally that opposer has used the DD mark “for over a decade now,”
i.e., since at least as early as January 13, 2002, in connection with various types of
online advertising, including in the field of apartment rentals:
Q. What services are provided by WebMagic Ventures
LLC in conjunction with the DD mark?
A. WebMagic provides a variety of services under the DD
mark, including providing advertising, promotion, and
match-making services for a variety of goods and services
of others.
For over a decade now, this has included providing
promotion of specific apartment buildings as well as for
other apartment rental firms, corporate and short-term
Opposition No. 91198157

6

housing, home sales and leasing firms, property
management, services and software, home furnishing
companies and retailers, home appliances, moving
services, roommates, and room rental services, renters’
insurance and more.
McLemore Dep., p. 8.
Second, opposer’s witness identified (a) several printouts from opposer’s
homepage on its DD.com website in May and June 2008, and January 2010, that
bear the mark DD for apartment rentals and associated services (McLemore Dep.,
pp. 10-11, Exh. 1-3), (b) printouts from opposer’s database server documenting use
of opposer’s website and DD mark, including printouts representing some of the
traffic that came to opposer’s website and clicked on the apartments category on the
first page, some of which then clicked through to visit the site of one of opposer’s
advertising partners, in December 2009, May 2010 and June 2010 (McLemore Dep.
pp. 15-16, Exh. 16-18, 20-21); and (c) registry and registrar data records from
Network Solutions dated November 2, 2011, showing that the DD.com domain
name has been registered continuously since March 17, 1998, and that opposer
owns the DD.com domain. McLemore Dep. pp. 18-19, Exh. 24-25.
Third, in response to opposer’s Requests for Admissions,4 applicant admits
that it did not use the DD APTS mark in commerce prior to March 25, 2010:
Request No. 8: The domain name “ddapts.com” was
registered on or after March 25, 2010.
Response: Admitted.

4 Opposer’s Notice of Reliance (Exh. 28).
Opposition No. 91198157

7

Request No. 9: Applicant did not use “DD APTS” in
commerce prior to registration of the domain name
“ddapts.com.’
Response: Admitted.
Based on opposer’s uncontroverted testimony and the exhibits provided with
it, as well as applicant’s admissions, opposer has demonstrated use of its mark DD
on advertising and information services, including in the field of apartment rentals
and associated services, primarily provided through data communication networks,
prior to July 2, 2010, applicant’s filing date. Accordingly, opposer has shown
priority of use over applicant of its mark DD on those services.
Likelihood of Confusion
Our likelihood of confusion determination under Section 2(d) 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). See also, In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201 (Fed. Cir. 2003). Two key considerations are the similarities between the
marks and the similarities between the goods. See Federated Foods, Inc. v. Fort
Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976).
We begin by comparing the marks. We note that while we must base our
determination on a comparison of the marks in their entireties, we are guided
equally by the well-established principle that, in articulating reasons for reaching a
conclusion on the issue of confusion, “there is nothing improper in stating that, for
rational reasons, more or less weight has been given to a particular feature of a
Opposition No. 91198157

8

mark, provided the ultimate conclusion rests on the marks in their entireties.” In re
National Data Corp., 732 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985).
Applicant’s mark consists of the letters DD, which is identical to opposer’s
entire mark, followed by the disclaimed, and thus, admittedly descriptive term
APTS. We find that DD is clearly the dominant portion of applicant’s mark because
it is the first term in the mark (see Palm Bay Imports Inc. v. Veuve Clicquot
Ponsardin, 73 USPQ2d at 1692 (Fed. Cir. 2005) (“Veuve” is the most prominent part
of the mark VEUVE CLICQUOT because “veuve” is the first word in the mark and
the first word to appear on the label)), and it is followed by a merely descriptive
term. See Cunningham v. Laser Golf Corp., 55 USPQ2d at 1846 (Fed. Cir. 2000),
quoting, In re National Data Corp., 224 USPQ at 752 (Fed. Cir. 1983) (“Regarding
descriptive terms, this court has noted that the descriptive component of a mark
may be given little weight in reaching a conclusion on the likelihood of confusion”).
Because of the overall similarities of the marks, consumers are likely to view
applicant’s DD APTS mark as a variation of opposer’s DD mark, with both marks
indicating a single source for the services. Therefore, we find that the parties’
marks are substantially similar in sound, appearance, connotation and commercial
impression.
We turn next to a consideration of the services, channels of trade and class of
purchasers. We must make our determinations under these factors based on the
services as they are recited in the application. See In re Elbaum, 211 USPQ 639
(CCPA 1976).
Opposition No. 91198157

9

As noted above, applicant is seeking to register its mark for “[p]roviding a
searchable online advertising website and informational guide featuring the goods
and services of other vendors via the internet in the field of apartment rentals;
[p]roviding an interactive real estate website which promotes housing and
apartment properties through offering prospective tenants video walk throughs,
property descriptions, text, price, location, maps and other information that would
be influential to a prospective tenant in making a rental decision.” Also as noted
above, Greg McLemore, opposer’s CEO, President and Managing Member, testified
that opposer has been using its mark for “providing promotion of specific apartment
buildings as well as for other apartment rental firms, corporate and short-term
housing, home sales and leasing firms, property management, services and
software, home furnishing companies and retailers, home appliances, moving
services, roommates, and room rental services, renters’ insurance and more,” and
that opposer “primarily provides services under the DD mark through data
communication networks, including the Internet, to computers, electronic tablets,
and cell phones.” McLemore Dep., pp. 8-9. Because applicant seeks to use its mark,
and opposer is using its mark, in connection with providing advertising and
information in the apartment rental market and associated services, we find that
the services are in part identical, and otherwise closely related.
There are no limitations as to channels of trade or classes of purchasers in
the recitation of services in applicant’s application. It therefore is presumed that
applicant’s services move in all channels of trade normal for those services, and that
Opposition No. 91198157

10

they are available to all classes of purchasers for those services. See Canadian
Imperial Bank of Commerce v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813,
1815 (Fed. Cir. 1987); Toys “R” Us, Inc. v. Lamps R Us, 219 USPQ 340, 343 (TTAB
1983). On the other hand, because opposer is relying on common law rights, it must
provide evidence regarding its channels of trade and classes of consumers.
However, because the services are in part identical and applicant’s trade channels
and classes of consumers presumably cover all channels of trade and classes of
consumers for advertising and information services in the field of apartment
rentals, applicant’s channels of trade and classes of consumers must necessarily
overlap with those of opposer. In view thereof, we find that the parties’ services
move in the same channels of trade and are sold to the same classes of consumers.
There is no evidence or discussion of any other du Pont factors. To the extent
that any are relevant, we treat them as being neutral.
In view of the similarity in the commercial impressions of applicant’s mark,
DD APTS, and opposer’s mark, DD, and the overlap in channels of trade and classes
of customers, we conclude that their contemporaneous use on the partly identical
and otherwise complementary services involved in this case is likely to cause
confusion as to the source or sponsorship of such services. As noted above,
applicant has not submitted any evidence, taken any testimony or presented any
legal argument to rebut opposer’s showing.
Decision: The opposition is sustained and registration to applicant is refused.