Friday, August 17, 2007

Precedential No. 48: Based on Third-Party Registrations, TTAB Finds Banking and Real Estate Brokerage to be Related

Relying on several third-party registrations that include the services recited in the application and in the cited registration, the Board affirmed a Section 2(d) refusal of the mark 1st USA and Design for (shown immediately below) "real estate brokerage and listing services." The Board found the mark likely to cause confusion with the registered mark FIRST USA (Stylized) for banking, credit card, insurance underwriting, and financial investment services. In re 1st USA Realty Professionals, Inc., 84 USPQ2d 1581 (TTAB 2007).

Applicant argued that the registrant is "not likely to expand its services to those identified in applicant's application," but the Board pointed out that the expansion of trade doctrine applicable in inter partes proceedings, has a "more limited application in an ex parte appeal." Here, the question is whether consumers are likely to believe that the services emanate from a single source, rather than whether the particular registrant has expanded or is likely to expand its business to include Applicant's services.

The Examining Attorney submitted "a number of third-party registrations showing that a single mark has been adopted by various entities" for both applicant's services and those of the cited registration. [TTABlog note: there did not seem to be a shred of evidence that these third-party marks are in use, or that anyone ever heard of them]. The Board concluded that customers who encounter these services offered under the same or a confusingly similar mark are likely to believe that they emanate from the same source.

As to the marks, the Board observed that they are identical in pronunciation and connotation. The stars in the applied-for mark are not sufficient to distinguish the marks: they are merely background material, and tend to "reinforce" the component "USA."

The Board noted that "Applicant did submit information about third-party applications/registrations" containing either 1st USA or FIRST USA. These registrations, however, were brushed, because applications and registrations "are not evidence that the marks shown therein are in use, or that the public is familiar with them." [TTABlog note: In other words, what's sauce for the goose is not sauce for the gander.]

In sum, the Board found that the marks convey the same commercial impression, and that the similarities in appearance outweigh the differences in stylization and the presence of the design element.

Applicant urged that the services involved are purchased with care, but the Board disagreed. Members of the general public buy and sell homes, and have bank accounts or credit cards, and therefore the Board does not regard them "as being particularly sophisticated." Nor are financial transactions necessarily conducted only after careful consideration. As to real estate purchases, however, the Board did recognize that some degree of care is exercised, and therefore to that extent this factor favored Applicant.

Considering all of the relevant du Pont factors, the Board found confusion likely.

TTABlog comment: Well, this case illustrates nicely why the Board's treatment of third-party registration evidence is so annoying to practitioners. In this Internet age, shouldn't the PTO be required to demonstrate that the cited third-party marks are at least in use?

Suppose the Applicant had submitted 100 third-party registrations that cover banking services but not real estate brokerage? Would that make a difference? Would that show that consumers are not likely to expect banking and real estate services to be offered under the same mark?

Text Copyright John L. Welch 2007.


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