Trademark Trial and Appeal Board
Patent and Trademark Office (P.T.O.)
*1 RED CARPET CORPORATION OF AMERICA AND RED CARPET REAL ESTATE SERVICES,
INC. JOINED AS PARTY PLAINTIFF
v.
JOHNSTOWN AMERICAN ENTERPRISES, INC. AND JOHNSTOWN AMERICAN COMPANIES JOINED AS
PARTY DEFENDANT
April 22, 1988
Hearing: February 23, 1988
Opposition No. 68,629 to application Serial No. 398,979, filed September 30, 1982
Alan S. Cooper and Kathy J. McKnight for Red Carpet Corporation or America and Red Carpet Real Estate Services, Inc. joined as party plaintiff
Jones, Askew & Lunsford for Johnstown American Enterprises, Inc., and Johnstown American Companies joined as party defendant
Before Rooney, Simms and Cissel
Members
Opinion by Cissel
Member
On September 30, 1982 Johnstown American Companies, a Georgia Corporation, applied to register the design shown below
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for the service of 'management of real estate properties for others'. [FN1] The mark was published, whereupon a notice of opposition was timely filed by Red Carpet Corporation of America, a California corporation. As grounds for the opposition opposer asserts prior use and registration [FN2] of the mark shown below,
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for real estate brokerage services, and that applicant's mark, as used in connection with applicant's services, so resembles opposer's mark, as used with opposer's services, that confusion is likely. Applicant's answer denies that confusion is likely.
The only issue for our determination is therefore the likelihood of confusion. Priority is not an issue because opposer is relying on its valid and subsisting registration. King Candy Co. v. Eunice King's Kitchen, 496 F.2d 1400, 182 USPQ 108 (CCPA 1974).
The record consists of the registration relied upon by opposer, the depositions of Shirley Wilson, opposer's 'National Director of Legal and Contracts,' and exhibits associated with her testimony, portions of applicant's responses to opposer's discovery, applicant's registrations Nos. 1,211,823 and 1,298,019 (shown and discussed below), portions of opposer's responses to applicant's discovery, and copies of one hundred and seventy third-party registrations relied upon by applicant. [FN3]
Although the services rendered by the parties in this proceeding are closely related and the respective marks used by the parties to identify these services can be described in terms which make it sound as if there were a close visual resemblance between them, we find that the marks are sufficiently different in appearance to exist together in the marketplace without the likelihood of confusion.
Opposer has clearly demonstrated the close relationship between its real estate brokerage services and applicant's real estate management services. The services are rendered through the same trade channels to the same class of purchasers. They are promoted in similar ways. We have no doubt, based on the record in this case, that the use of the same marks or very similar marks to identify both real estate brokerage services and real estate management services would likely cause confusion.
*2 Both parties' central arguments concern the marks. Opposer asserts that the 'design marks in issue consist of non-solid pentagonal-shaped figures which have a lighter spacing within the non-solid pentagonal-shapes,' (brief, p. 37) and that even though there are 'discernable' differences between them, because the marks will not be compared side-by-side, their overriding similarities, based on the general impressions created by the marks, will lead to confusion.
Applicant argues to the contrary, pointing to specific distinctions between the designs as the basis for potential customers to distinguish between the two. In support of its argument applicant made copies of record of one hundred and seventy third-party registrations of design marks arguably containing pentagonal shapes. Applicant's theory is that consumers are so accustomed to seeing pentagons as a feature of marks, especially marks used to suggest a house or building structure, that potential customers readily distinguish among such marks based on small differences.
Applicant also made of record copies of the two registrations it owns for marks used with virtually identical real estate management services. The marks are:
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for 'real estate management and investment services'; [FN4] and
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for 'management of real estate properties of others.' [FN5] Applicant further argues that the lack of evidence of actual confusion demonstrates that it is unlikely that confusion will occur in the future.
As stated above, we find the mark applicant here seeks to register does not resemble opposer's mark so closely that confusion is likely. We think applicant's mark would likely be perceived as an abstract design of a house. Although the pentagonal silhouette in the center of opposer's mark could also be identified as a house design, the combination of the solid center design and the surrounding solid design elements results in a mark which creates a different visual impression from that of applicant's design mark. Even recognizing that the two marks may not be compared on a side-by-side basis, and taking into account the imperfect recall of people in the marketplace for services such as these, we do not believe that these marks are so similar that they would likely lead to confusion.
Our conclusion is supported by the record. While the third-party registrations submitted by applicant are for marks which are not identical to either of the marks here in issue and many of the various marks in the third-party registrations are used for goods and services unrelated to real estate services, nonetheless many of these marks show five-sided figures registered for goods or services which are in some way related to real estate in general or to houses in particular.
It would be inappropriate to resolve the broad issue of likelihood of confusion based solely upon the registration of different pentagonal designs for the broad spectrum of goods and services for which they are registered. As opposer points out, the third-party registrations are not evidence of use of the involved marks to the extent that the public is necessarily aware of them. They are of little probative value in determining whether the marks here in issue, considered in their entireties, are likely to cause confusion. They cannot be an aid to an applicant who seeks to register yet another confusingly similar mark. See: AMF Inc. v. American Leisure Products, Inc., 177 USPQ 268 (CCPA 1973).
*3 The third-party registrations are, however, as the Board noted in American Hospital Supply Corp. v. Air Products and Chemicals, Inc., 194 USPQ 340, at 343, 'competent to establish that a portion common to the marks involved in a proceeding has a normally understood and well-known meaning; that this has been recognized by the Patent and Trademark Office by registering marks containing such a common feature for the same or closely related goods where the remaining portions of the marks are sufficient to distinguish the marks as a whole; and that therefore the inclusion of [the common element] in each mark may be an insufficient basis upon which to predicate a holding of confusing similarity.'
The designs registered by third parties support applicant's contention that a five-sided design used with goods and services in the real estate field may be perceived as a design of a house. This element is suggestive of a key element involved in the real estate services of both applicant and opposer in the case at hand.
Even if the third-party registrations of five-sided designs were not considered, we think it is obvious that each of the marks at issue here is suggestive of a house.
The mere presence of a common, suggestive element in two marks is usually not enough support upon which to base a finding that confusion is likely. Tektronix, Inc. v. Daktronics, Inc., 189 ESPQ 693 (CCPA 1976). In the case at hand, although the designs in question may both be characterized as stylized houses, they are so different visually it is not even accurate to describe them as 'common elements.' The suggestive connotation of the two different designs may be common, but this is quite different from concluding that they share a common design element.
Applicant's prior registration of the same design it seeks to register here combined with its trade name (Reg. No. 1,298,019) is not determinative of the registrability of the design alone. An applicant's ownership of a subsisting registration of a mark which is substantially identical for substantially identical goods or services could be a good defense in an opposition proceeding under some circumstances, but in the case before us applicant's previously registered marks are not substantially identical to the mark here sought to be registered. See: The Place for Vision, Inc. v. Pearle Vision Center, Inc., 218 USPQ 1022 (TTAB 1983). The mark in Reg. No. 1,211,823 is quite different from the mark here sought to be registered.
As the prior registrations owned by applicant are not determinative of the issue of likelihood of confusion, neither is the fact that there is no evidence of actual confusion. It is a relatively minor factor weighing in favor of applicant's position, but it could not be considered conclusive in the absence of evidence showing that the areas and the manner in which the marks of the parties were used would have provided the opportunity for the realization of the likelihood of confusion.
*4 In summary, when all of the relevant factors in this case are considered, we find the visual dissimilarity of the two designs in question to be controlling. We simply are unconvinced that these different symbols would be likely to be confused with each other, even though the services in connection with which they are used are closely related. The only thing they have in common with each other is suggestiveness as applied to services related to houses, and the way that each symbol achieves this suggestiveness is graphically different.
Accordingly, the opposition is dismissed.
L. E. Rooney
R. L. Simms
R. F. Cissel
Members, Trademark Trial and Appeal Board
FN1. S.N. 398,979, claiming first use on August 1, 1979.
FN2. Reg. No. 1,087,826, issued March 21, 1978.
FN3. Opposer objected to applicant's attempt to rely on its own responses to opposer's discovery requests and applicant ultimately withdrew its offer to introduce the disputed evidence into the record.
FN4. Reg. No. 1,211,823, issued October 5, 1982, with use claimed since July 1, 1976.
FN5. Reg. No. 1,298,019, issued September 25, 1984, claiming use since May 8, 1981.