estta tracking number: estta1126748 04/13/2021
TRANSCRIPT
Trademark Trial and Appeal Board Electronic Filing System. https://estta.uspto.gov
ESTTA Tracking number: ESTTA1126748
Filing date: 04/13/2021
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 88624647
Applicant Polaris Executive Center, LLC
Applied for Mark GV GENESIS VILLAGE
CorrespondenceAddress
ARNOLD BRAUNGENESIS BIOTECHNOLOGY GROUP. LLCLAW DEPARTMENT2439 KUSER ROADHAMILTON, NJ 08690UNITED STATESPrimary Email: [email protected] Email(s): [email protected], [email protected]
Submission Applicant's brief
Attachments FINAL APPEAL BRIEF Serial No. 88624647.docx.pdf(435596 bytes )
Appealed class Class 036. First Use: 2019/03/06 First Use In Commerce: 2019/03/06All goods and services in the class are appealed, namely: Apartment and officerentals
Filer's Name Arnold Braun
Filer's email [email protected], [email protected]
Signature /Arnold Braun/
Date 04/13/2021
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IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
In re Application of Polaris Executive Center, LLC Application Serial No: 88624647
Mark: “GV Genesis Village” Filed: 9/20/2019
Trademark Attorney: James Hill Date April 13, 2021
Appeal Brief
Pursuant to a Notice of Appeal filed with the Trademark Trial and Appeal Board on 1/18/2021
the Applicant hereby appeals from the Examining Attorney’s final refusal denying reconsideration to
register the above-identified mark, dated 2/17/2021, and respectfully requests the Trademark Trial and
Appeal Board to reverse the Examining Attorney’s denial of publication.
Introduction
Applicant seeks registration on the Principal Register of its mark, “GV Genesis Village” in
International Class 036, “Apartments and Office Rental” and hereinafter “Applicant’s Mark.” The
Examining Attorney refused registration of Applicant’s mark in a Final Office Action, dated 8/04/2020,
under Section 2 (d) – Likelihood of Confusion. He further denied Applicant’s Reconsideration on
2/17/2021. Applicant files its Appeal Brief herein.
ISSUE PRESENTED
The issue presented in this matter is the likelihood of confusion under section 2 (d). Applicant’s
mark is “GV Genesis Village” with design - “Apartment and Office Rentals.” Examining Attorney cited
the following marks in opposition:
U.S. Registration No. 3256759 is “GENESIS PARTNERS” in typed drawing form for “real estate services, namely, managing real property” in International Class 36.
U.S. Registration No. 3254018 is “GENESIS PARTNERS” with stylization and design for “real estate services, namely, managing real property” in International Class 36.
US registrations 3256759 and 3254018; hereafter referred to as “Cited Marks” and are
owned by “Genesis Partners LLC” hereinafter “Registrant.” Applicant and Registrant are
referred to as the “Parties.”
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Examining Attorney further cited the following registration under section 2 (d).
U.S. Registration No. 4604136 is “GV” in standard characters for services including “real estate and real property services, namely, acquisition, agency, and brokerage; real estate
and real property services, namely, management and leasing” - International Class 36;
hereinafter referred to as ‘136.
Applicant traverses the Examining Attorney’s denial for the following reasons:
1. Applicant’s Mark appearance is highly dissimilar to Cited Marks and consumers can see this
dissimilarity at first glance. This point weighs in favor of publication.
2. Applicant’s commercial connotation, meaning and impression is dissimilar to Cited Marks
because “ Partners” and “Village” have very different connotations and impressions to consumers. This
point weighs in favor of publication.
3. The Parties’ goods and services are not identical nor related. Registrant offers real estate
services to consumers, namely property management services. Applicant does not offer property
management as a service to any consumer. Examining attorney erroneously concluded the services are
related and they are not.
4. During prosecution Registrant amended Cited Marks’ identifications by deleting “buying and
selling real estate” amending it to “property management” thus limiting its identification of services.
Examining attorney incorrectly claimed that Registrant’s identification was broad enough to subsume
Applicant’s goods and services (renting apartments) and it does not. This point too weighs in favor of
publication.
5. The examining attorney applied the broader, global real estate industry in his analysis
concluding the Parties’ services are related. This approach failed to consider the differences between
offering consumers actual property management services and offering consumers an apartment to rent.
This Board must reject the examining attorney approach used in his analysis.
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6. The examining attorney submitted flawed extrinsic screenshot because it consisted entirely of
licensed real estate agents/brokers who “buy and sell real estate” on behalf of third parties - this is
precisely what the Registrant specifically amended out of its identifications during prosecution. This
evidence, cannot possibly show Registrant’s services, let alone that the Parties’ services and goods are
commonly offered under one single mark. Moreover, Applicant is neither a real estate agent or broker – it
offers no such services. This Board must reject this evidence and absent it, the Board must reverse the
denial.
7. In at least two instances the Office has registered or authorized marks with the shared term
“Genesis” which specifically recited “real estate services” like Registrant, in their identifications.
Applicant’s mark recites no “real estate services” yet the examining attorney denied its registration.
8. Applicant’s conditions of purchase, legal requirements, background checks and advance
deposits make the likelihood of confusion de minimis, if any. This point weighs in favor of publication.
9. The likelihood of confusion between Applicant’s Mark and Mark ‘136 is nonexistent or de
minimis because of the significant visual, sound and structural differences between Applicant’s Mark and
Mark ‘136. This point weighs in favor of publication.
For these reasons the Board must reverse the refusal to register.
I. Applicant’s Mark is Dissimilar in Appearance, Connotation, and Commercial Impression
from Cited Marks.
A. Applicant’s Mark is Dissimilar in Appearance to Cited Marks’ Appearance
In determining whether an applicant’s marks are likely to cause confusion, the similarity or
dissimilarity of the marks in their entireties, the similarity of the goods or services, whether the goods or
services are sold in similar channels of trade, the conditions under which sales are made and the level of
sophistication of the buyers to whom sales are made, the number and nature of similar marks in use on
similar goods or services, and the extent of actual or potential confusion are weighted. In re E.I. Du Pont
4
de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (C.C.P.A. 1973); TMEP §1207.01. A likelihood of
confusion does not refer to the similarity of the marks themselves, but the probable confusion of
customers about the source or origin of the particular goods. See, e.g., Application of West Point-
Pepperell, Inc., 178 USPQ 558 (C.C.P.A. 1972). Each component of a mark must be given equal
weight, rather than breaking up a mark into its component parts for comparison. 3 J. Thomas McCarthy,
McCarthy on Trademarks and Unfair Competition §23.41 (1998); TMEP §1207.01. As shown below,
Consumers can easily discern appearance dissimilarities between Applicant’s Mark, its design, font and
appearance and Cited Marks and Mark ‘136 upon first glance.
Applicant Mark 88624647
3256759 (‘759) 3254018(‘018)
4604136(‘136)
Applicant’s Mark offers a creative design with stylized wording for “GV Genesis Village” and an
artistic “GV” in a circle, with an ankh above the circle, above an ornate gate with elegant scrollwork. The
ornate gate invites consumers to “open it” and enter into a “Village.” Applicant intended this gate to
connotate a “wrought iron gate” leading to a “Village” - i.e. a place to live and work for consumers.
Cited marks are devoid of any design, in essence, fundamentally word marks.
In assessing the likelihood of confusion, consideration must be given to (i) additional word(s), (ii)
different typefaces, and (iii) different design patterns or drawings in distinguishing the sounds,
5
appearance and connotations of different marks. (See, Times Newspapers, Ltd. v. Times Publishing Co.,
25 U.S.P.Q. 2d 1835 (M.D. Fla. 1993).
Applicant’s mark appearance is dissimilar from Cited Marks and this point is evident upon sight.
Under du pont this dissimilarity weighs in favor of publication. Moreover, as discussed below, the
Federal Circuit has held that a design element, like Applicant’s design, can suffice to overcome a
likelihood of confusion if any exists between two marks. See In re Electrolyte Labs. Inc., 929 F. 2d 647
(Fed. Cir. 1990). This dissimilarity combined with its design element (absent in Cited Marks) weighs in
favor of publication under du pont.
B. Applicant’s Commercial Impression is Dissimilar to that of the Cited Marks
A trademark’s “commercial impression” is the meaning or idea it conveys or the mental reaction
it evokes. Spice Islands, Inc. v. Frank Tea & Spice Co., 505 F.2d 1293, 1296 (C.C.P.A. 1974); In re
Aquitaine Wine USA, LLC, 126 USPQ2d 1181, 1187 (TTAB 2018) ("[W]here . . . we are comparing a
mark in standard characters to a mark that includes a pictorial representation of that term, the fact that the
word + design mark includes such a pictorial representation will be taken into account to determine
likelihood of confusion in terms of the marks’ overall connotation and commercial impression."). See
also, Vornado Inc. v. Breyer Electric Mfg. Co., 390 F.2d 724, 156 USPQ 340 (CCPA 1968) (finding that
“psychological imagery evoked by the respective marks” overcame any similarities between the marks).
In the present matter, the Parties’ Marks have different commercial impressions and connotations because
the terms “Partners” and “Village” have different impressions and connotations.
1. “Village,” and “Partners” have Different Meanings and Commercial Impressions.
Applicant’s “Village” conveys a place for people to live and work. Applicant’s business, renting
apartments and space that it owns, comports with the term “Village.” Registrant’s “Partners” conveys a
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business relationship between businesspersons, anything but a “Village.” “Village” and “Partners” cannot
be interchanged or mistaken because they have different impressions and meanings.
Meaning or connotation is another factor in determining whether the marks are confusingly
similar. See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A.
1973) ; In re Cynosure, Inc., 90 USPQ2d 1644, 1645-46 (TTAB 2009). See TMEP 1207.01(b)(v)
Similarity in Meaning. Merriam – Webster defines “Village” as follows: “noun, often attributive vil·
lage | \ ˈvi-lij \ Definition of village; 1a: a settlement usually larger than a hamlet and smaller than a
town; b: an incorporated minor municipality; 2: the residents of a village. 7/10/2020 Response to Office
Action Definition of Village TSDR page 8, line 11. It also defines “Partners” as ; 1a: one associated
with another especially in an action : ASSOCIATE, COLLEAGUE our military partners throughout the
world; 2: a member of a partnership especially in a business partners in a law firm also : such
membership. Ibid.. Because “Partners” and “Village” have dissimilar connotations, impressions and
meaning to consumers, this point weighs in favor of publication for the Applicant.
Even though Applicant disclaimed “Village” “the term remains relevant to assess likelihood of
confusion. See In re Shell Oil Co., 992 F. 2d 1204,1206 (Fed. Cir. 1993) (filing of a disclaimed matter
does not remove the disclaimed matter from the purview of determination of likelihood of confusion).
See also “[A] disclaimer . . . has no legal effect on the issue of likelihood of confusion. The public is
unaware of what words have been disclaimed. . . .” In Re Nat. Data Corp. 753 F. 2d 1056, 1059 (Fed.
Cir. 1985) (citation omitted) and “disclaimer does not remove the disclaimed matter from the mark. The
mark must still be regarded as a whole, including the disclaimed matter, in evaluating similarity to other
marks.” Trademark Manual of Examining Procedure, October 2012 ed. (“TMEP”) §1213.10.
Applicant’s disclaimer does not relegate “Village” to oblivion but assists to distinguish its
meaning and connotation from Cited Marks. Applicant states that the dissimilar impression and
connotation weigh in favor of publication under du pont.
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II. The Parties’ Goods and Services are not Identical or Related.
The Parties’ identification of goods and services are neither identical nor related. The examining
attorney erroneously argued that Cited Marks’ identification is so broadly worded as to subsume
Applicant’s goods and services. However, as explained below, the Registrant amended its identification
by narrowing Registrant’s goods and services, so as not to be so broadly worded. Further, the examining
attorney applied the broader global real estate industry in his analysis of the Parties’ services. By doing
this, he equated offering real property management services for a fee to consumers to offering apartment
rentals to consumers as related and they are not. This approach failed to understand the important
differences between these two. Moreover, the case law requires a different standard, not a broad standard
of an entire industry. Finally, the extrinsic evidence of the examining attorney is fundamentally flawed
and must be rejected. This evidence showed entities “ buying and selling real estate” on behalf of third
parties. Registrant’s amendments to its description of services and goods specifically, deleted the terms
“buying and selling of real estate” during prosecution. Hence the evidence is flawed and nonprobative
because it cannot possibly be representative of Registrant’s goods and services and this Board must reject
it. Absent this evidence the Applicant asks this Board to grant registration since no proof of related
services of the Parties exists.
1. The Parties’ description of services and goods are neither identical nor related.
Contrary to the examining attorney, Registrant’s identification is not broad, but is limited to
“namely, managing real property” and this point is the crux of the issue. Applicant offers no services at
all, and no “managing real property” for a fee to anyone. Examining attorney incorrectly inferred that
apartment rentals is the same as “managing real property” and this is incorrect.
Scrutinizing Registrant’s language “namely managing real property” it contains a critical
limitation, “namely” as a limiting term. The terms "namely," "consisting of," "particularly," and "in
particular" are definite and are preferred to set forth an identification that requires greater
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particularity. TMEP 1402.03(a). See also TMEP 1402.01 (a) “[f]or example, "cleaners, namely, glass
cleaners, oven cleaners, and carpet cleaners; deodorants for pets" is an acceptable identification in Class
3. In this example, the word "cleaners" names the category covering "glass cleaners, oven cleaners, and
carpet cleaners."
Registrant’s identification intended to trademark specifically services that are “managing real
property” offered as a service. The examining attorney erred by concluding that Registrant’s
identification subsumed all aspects of real estate including Applicant’s apartment rentals. The very plain
language of its identification proves that Registrant’s identification is narrow in scope and not broadly
worded so as to subsume the Applicant’s goods and services. Examining attorney erred by concluding
Registrant’s wording was broad and encompassing all aspects of real estate.
Indeed, Registrant told the Office for both Cited Marks that it intended to limit its real estate
service. See 12/23/2002TSDR Case Viewer ID 76387095; Response to Office Action p. 6 lines 21 -23
and 11/13/2002 TSDR Case Viewer ID 76390000; Paper Correspondence Incoming p. 7 line 21 -23
each of which state for Cited Marks, “Specifically, in amending the identification of services, Applicant
has deleted ‘buying and selling’ of real estate and limited its real estate services to management of real
property in International class 36.” [underline added].
Registrant amended its identification from “buying and selling real estate” to “managing real
property.” The amendment removed Registrant from sales, purchases and rentals of real estate. Yet, the
examining attorney’s extrinsic evidence consists of real estate agents or brokers “buying and selling real
estate” exactly what Registrant deleted. This point shows that the examining attorney’s extrinsic
evidence of representative entities is flawed. The extrinsic evidence cannot possibly establish related
services of the Parties since it neither is representative of Registrant or Applicant. Further, the
amendment limiting its services proves that Cited Marks are not broad in scope and do not encompass nor
subsume Applicant’s goods and services.
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Because the Registrant limited its goods and services to be “namely managing real property,” the
examining attorney erred by broadening its scope so as to include Applicant’s goods and services
(apartment rentals) when he should not have done so. Registrant’s description is narrow and limited and
this by Registrant’s own language and amendments. The examining attorney erroneously concluded that
Registrant’s identification subsumes Applicant’s goods and services. If Registrant’s identification is
narrow and not broad, which it is, then this Board must reject the examining attorney’s conclusions and
reverse his denial of registration.
2. The Examining Attorney erroneously used the broader real industry to conclude related
services.
The examining attorney applied the broader real estate industry in his analysis and this approach is
contrary to the case law. See In re Iris Data Services, Inc. Serial No. 86455558 (TTAB Apr. 24, 2017)
(Board concludes “legal services” and “legal discovery and legal document review” are not the same nor
related “simply because the services have something to do with the legal field does not make them per se
related” Citation omitted.). See also Edwards Lifesciences Corp. v. VigiLanz Corp., 94 USPQ2d at 1410
(“[A] finding that the goods are similar is not based on whether a general term or overarching relationship
can be found to encompass them both.”) (internal citation omitted); finally, In re White Rock Distilleries
Inc., 92 USPQ2d 1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka
infused with caffeine are related goods because there was no evidence that vodka and wine emanate from
a single source under a single mark or that such goods are complementary products that would be bought
and used together).
That the Parties share an industry like real estate, does not necessarily equate to a finding of related
services. “Something to do with” is not the rule in the above cases nor is some general term or overarching
relationship. Nor does doing business within a broad industry portend related services. Merely because
parties can potentially operate in the same broad industry does not, by itself, establish that their goods are
related. National Rural Electric Cooperative Assoc. v. Suzlon Wind Energy Corp., 78 U.S.P.Q.2d 1881,
1885 (TTAB 2006), aff’d 2007 U.S. App. Lexis 2317 (Fed. Cir. 2007). A broad general market category is
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not a generally reliable test of relatedness of products. Bose Corp. v. QSC Audio Products, Inc., 293 F.3d
1367, 63 U.S.P.Q.2d 1301, 1310 (Fed. Cir. 2002). Serial No. 88/197,106: Applicant’s ExParte Appeal Brief
10 Certainly, the large array of products that are available in outdoor recreation.
The Examining Attorney used a broad categorization of real estate in his analysis. This approach
does not comport with the holdings cited above. The examiner failed to consider the actual important
differences between rendering property management services as a service to third parties, like Registrant,
and Applicant’s renting an apartment. Actual differences exist between these two goods and services.
Applicant does not offer property management services to consumers as a service and this is evident from
Applicant’s language in its identification. The law did not intend a one size fits all method to analyze
relatedness issues. Since Registrant did indeed limit its description of goods and services by amendment
to the narrow field of property management while jettisoning purchases, sales and rentals of real estate,
the examining attorney erred by applying the broader real estate industry in his analysis.
That the Parties services exist, operate or used together within the broad real estate industry is not
enough to show related services. See In re Digirad Corp., 45 U.S.P.Q.2d 1841 (holding that despite
some industry 'overlap', DIGIRAY and DOGORAD are not confusingly similar for high tech medical
diagnostic apparatus used to different ends); Cooper Industries, Inc. v. Repcoparts USA, Inc., 218 USPQ
81,84 (T.T.A.B. 1983) ("the mere fact that the products involved in this case (or any products with
significant differences in character) are sold in the same industry does not of itself provide an adequate
basis to find the required relatedness).
See also, “[t]he Board has not hesitated to find an absence of likelihood of confusion, even in the
face of identical marks applied to goods used in a common industry.” In re Fesco, Inc., 219 USPQ 437
(TTAB 1983) (reversing refusal to register FESCO for farm equipment distributorship services, based on
prior FESCO registration for fertilizer processing equipment). In Shen Mfg. Co. v. Ritz Hotel, Ltd, “the
mere fact that goods and services are “used together” does not on its own show relatedness 393 F. 3d
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1238, 1244 (Fed. Cir. 2004). There must be a factual inquiry as to whether the goods and services at
issue are related in the mind of the consuming public as to their origin. Id. (underline added).
By failing to recognize the differences between the Parties’ services and by broadening
Registrant’s identification of goods and services, the examining attorney erroneously concluded the
Parties’ services are related. They are not. This broad approach is contrary to the case law because it
fails to recognize inherent differences in those services and goods. Applicant asks this Board to reverse
the examining attorney’s denial based on these points and register Applicant’s Mark.
3. The examining attorney’s extrinsic evidence is flawed and must be rejected.
To support his claim for relatedness, the examining attorney submitted extrinsic evidence
screenshots. This evidence contains two fundamental flaws (1) it consists entirely of real estate
agents/brokers offering real estate services to third parties as a service; Applicant provides none of the
services of real estate agents/brokers; (2) the extrinsic evidence consists entirely of real estate
agents/brokers “buying and selling real estate”, the very terms the Registrant deleted from Cited Marks
through amendment. If Applicant is not engaged in real estate agents/brokers services, and if the
Registrant deleted “buying and selling real estate” from its identification then this Board must reject the
extrinsic evidence because it cannot be representative of either of the Parties. In that case, it cannot show
the Applicant’s goods and services are offered under a single common mark. Absent this evidence, no
support exists for the examining attorney’s positions. Applicant asks this Board to grant registration.
Because the extrinsic evidence is flawed under, In re White Rock Distilleries Inc.,92 USPQ2d
1282, 1285 (TTAB 2009) (finding Office had failed to establish that wine and vodka infused with
caffeine are related goods because there was no evidence that vodka and wine emanate from a single
source under a single mark or that such goods are complementary products that would be bought and used
together) it must be rejected as failing to show related services.
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During prosecution, Applicant traversed every single screenshot of the extrinsic evidence on the
basis that (1) the evidence shows real estate agent and broker services (Applicant is not an agent or
broker; it offers no such services); (2) the evidence recites “buying and selling of real estate” (specifically
deleted by Registrant during prosecution) and (3) the evidence recites services to third party property
owners (Applicant offers no services to third parties1). The examining attorney’s extrinsic evidence
including registrations and web shot screens, also traversed. Specifically , 1/18//2021, TSDR, TEAS
Request Reconsideration after Final pages 9-10 cited all such shots which Applicant traverses.
Applicant submitted the Certification of Phillip Stephano, Property Manager for Applicant. See
1/18/2021 Certification of Phillip Stephano, Property Manager (attachment) TSDR Request for
Reconsideration After Final, Page 18. Mr. Stephano’s Certification states, (a) Applicant is not a
licensed real estate agent of broker renting or offering third party properties See Para. 6; (b) Applicant
rents and leases properties that it owns and does not accept third party properties to lease, sell or rent; See
Para. 3; (c). Applicant performs nor offers any property management services to anyone as a service; See
Para 3.
III. The Board has registered marks of goods and services at issue far more similar than the
Parties here.
Numerous decisions have found no likelihood of confusion in situations where the goods at issue
were far more similar than Applicant’s and Registrant’s services. See Electronic Design & Sales, Inc. v.
Electronic Data Systems Corp., 954 F.2d 713, 713, 21 USPQ2d 1388 (Fed. Cir. 1992) (no confusion
between “E.D.S.” computer services and “EDS” battery chargers, even though market overlap existed;
even if market overlap), citing with approval Astra Pharmaceutical Products, Inc. v. Beckman
Instruments, Inc., 718 F.2d 1201, 220 USPQ 1388 (1st Cir. 1983) (no confusion between ASTRA for
cardiovascular drugs, and ASTRA for blood analysis instrument, even though “both parties’ products are
used in the medical or health care field” and could even be found in the same hospitals – i.e. side by side
1 Real estate agents and brokers typically represent principals. Applicant does not represent principals in renting
apartments.
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use); accord, Clayton Mark & Co. v. Westinghouse Elec. Corp., 356 F.2d 943, 944, 148 USPQ 672
(C.C.P.A. 1966) (“we do not see that any confusion as to origin of the goods is likely by reason of the
factors relied on by appellant, namely, that ‘MARK’ electrical conduit and ‘MARK 75’ circuit breakers
may be bought from the same distributors, used by the same contractors, in the same structure, and
included in the same specification sheets”).
Thus, the Court has met with similar distinctions in the past to determine that no likelihood of
confusion exists despite a shared term. In the present matter, Applicant and Registrant have a shared
term. The case law shows that a shared term is not fatal to registration. Other marks had similar shared
terms yet they registered.
Applicant rents apartments and office space; Registrant offers “real estate services namely
managing real property” to consumers. That Applicant offers no service of “property management” is
the critical issue. If in all these cases cited above, the Court found the services unrelated, so too is
Applicant and Registrant’s services unrelated. The cases required the examining attorney to consider and
differentiate the elements of the goods and services by applying a careful analysis of each service or good
and not the broader global real estate industry. The Applicant asks this Board to reverse examining
attorney’s denial based on the use of flawed extrinsic evidence which cannot support or establish
relatedness of the goods and services of the Parties.
1. Registrant is a real estate developer and sub-divider selling its services.
Registrant is a “Partnership” for the purpose of investment funding to facilitate investments in
real estate and real estate development. All exhibits are referenced in the record as follows.
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Exhibit Statement Comment
USPTO
1/18/2021
TSDR Request
for
Reconsideration
Exh 3 Pages 1 – 2
“Genesis Partners of Bridgeport, West Virginia was formed to coordinate the investment in
Charles Pointe…” Exh. 3 p. 1 l. 1 – 4
Genesis Partners was “founded…to bring public and private partnerships together.” Exh. 3 p. 1
para (2)
Proves Registrant was formed
to facilitate investment for
the purpose of establishing
partnerships together. It
offers real estate services.
Connotation is “business relationship.” Note “partnership” connotation.
USPTO
1/18/2021
TSDR Request
for
Reconsideration
Exh. 4 Pages 1-
3
“Genesis Partners primarily “operates in the Land Subdividers, Developers, Commercial business
/industry with in the Real Estate sector.” P. 1 para
1 under “Business Description.” See also Sector,
Category and Industry p. 1
Registrant is a sub-divider,
developer or real estate.
Registrant offers real estate
services.
Applicant does no subdivision
of property, no real estate
development and no
commercial business in real
estate.
USPTO
1/18/2021
TSDR Request
for
Reconsideration
Exh 5 Page 1
News article announcing real estate development
by Genesis Partners. P. 1 – 3 for mater plan
development
Applicant does not develop
real estate nor does it perform
commercial real estate.
Commercial impression is
“business” and “partners.”
USPTO
1/18/2021
TSDR Request
for
Reconsideration
Exh 6 Pages 1
Bio of a Genesis Partner “partner” P. 1 “Partner at
Genesis Partners LP – Bridgeport, W. Virginia.”
Registrant is partner oriented
operation and establishes the
connotation of “partnership” investment and fund raising
for Registrant. This
underscores the connotation of
“Genesis Partners” mark to consumers.
This evidence underscores one fact, Registrant offers services, that is real estate services to Consumers, a
service oriented business. Applicant does not offer services but simply apartment rentals and the Parties
businesses are not related.
15
IV. Applicant’s purchase conditions, legal safeguards and buyer sophistication render the
likelihood of confusion de minimis.
Applicant’s consumers are careful purchasers because its apartments rentals are (1) very
expensive costing into the thousands of dollars in rent; (2) as required by state law, Applicant requires
signed leases for all apartments, (3) as required by state law, Applicant advises consumers of attorney
review for all leases, and (4) Applicant requires a detailed background check, including credit checks, of
potential renters for all apartments, credit report releases. The totality of these safeguards makes a
likelihood of confusion is de minimis, if any. 1/18/2021 See Certification of Phillip Stephano, Property
Manager TSDR Request for Reconsideration pages 1 – 3. Applicant background checks all renters. See
paras 2 & 5 Cert; Applicant requires substantial deposits in the thousands of dollars. Id. para. 7;
Applicant requires a financial test for renters. Id. para 5; Applicant requires a written lease and advises
attorney review by consumers. Id. para 8.
The test for likelihood of confusion is performed with respect to the purchaser’s perception of the
services, where those services are expensive and unique the consumer’s standard is that of a “criminating
purchaser” See 4 McCarthy, § 23:96, at 23-319-20. Because Applicant’s services are expensive and
unique i.e. - the discriminating purchaser standard must apply here as purchasers will use a high degree of
care in renting Applicant’s apartments and space.
Applicant’s consumers are hardly causal purchasers by any definition and they will apply a higher
degree of care than typical consumer purchases for toothbrushes or a haircut. Examining Attorney stated,
“the standard of care for purchasing the goods is that of the least sophisticated potential purchaser.” See
2/17/2021, TSDR; Request for Reconsideration after Final Action Denied 2/17/2021; para. 15; line 5.
Even so, the fourth DuPont factor which considers “[t]he conditions under which and buyers to whom
sales are made, i.e. “impulse” vs. careful, sophisticated purchasing” applies as well. See Stone Lion 110
USPQ2d at 1162 (quoting Dupont, 177 USPQ at 567).
16
Applicant’s consumers are not impulsive, they are careful consumers and deliberate over
purchasing Applicant’s goods and services. Because Applicant requires significant advance deposits
with high rents, the higher standard must apply of discriminating buyers. See In McGraw-Hill, Inc. v.
Comstock Partners, Inc., 17 U.S.P.Q. 2d 1599, 1604 (1990) citing McGreggor-Doniger, Inc. v. Drizzle,
Inc. 599 F 2d 1126, 1137 (2d Cir. 1978), the court determined that the greater the value of an article the
more careful the consumer.
For all these reasons, Applicant’s purchasers will carefully and deliberately transact their
purchasers. Applicant’s purchasers are keenly aware of what they are buying and certainly not spending
thousands on impulse but rather based on information, needs and qualifications. The level of
discrimination of the Applicant’s purchasers of its goods and services dictates that the likelihood of
confusion is de minimis, if any, and this factor weighs in favor of publication.
V. “Genesis” is diluted and entitled to narrow protection.
Evidence of third-party use falls under the sixth du Pont factor – the “number and nature of
similar marks in use on similar goods.” In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177
USPQ 563, 567 (C.C.P.A. 1973). If the evidence establishes that the consuming public is exposed to
third-party use of similar marks on similar goods, it “is relevant to show that a mark is relatively weak
and entitled to only a narrow scope of protection.” Palm Bay Imps., Inc. v. Veuve Clicquot Ponsardin
Maison Fondee en 1772, 396 F.3d 1369, 1373-74, 73 USPQ2d 1689, 1693 (Fed. Cir. 2005). “GENESIS”
is much diluted, and should not receive strong trademark protection.
It is well settled that third party use of marks that incorporate a shared term is evidence of the
strength of the particular mark and is enough to show that the public recognizes the shared term as a
common term. Olde Tyme Foods, Inc. v Roundy’s Inc. , 22 USPQ2d 1542 (Fed Cir. 1992). See also
TMEP 1207.01 When the at issue marks are so common or in wide use by others consumers are
conditioned to distinguish among them based on slight differences. Also, the strength or weakness of a
17
mark is important in determining a likelihood of confusion. See McCarthy on Trademarks and Unfair
Competition 4th edition) Section 23:48. “The greater the number of identical or more or less similar
marks already in use on different kinds of goods, the less is the likelihood of confusion between any two
specific uses of the weak mark.” First Savings Bank, F.S.B. v. First Bank Systems 101F.3d 645, 653-54
(10th Cir).
Applicant asserted twenty – four live records in the TESS registered marks incorporating the
term “Genesis” and all using IC 036 Search term: "Genesis"[bi,ti] and live[ld] and `RN > "0" and
"036"[IC]. See 1/18/2021 TSDR - TEAS Request for Reconsideration; Exh 8. Of these marks two are
highly relevant because they also (1) employ IC 036 (same as applicant/registrant); (2) incorporate “real
estate activities” like Registrant in their descriptions and (3) share the term “Genesis.” They are:
Registration Number Exhibit No.
No. :Ge esis of “tyle USPTO 1/18/2021 TSDR
- TEAS Request for Reconsideration Exh. 9. Registered
2005.
Same IC 036: same description as
appli a t a d registra t, Operati g marketplaces for sellers of real
estate and/or real estate services. [bold
added].
“erial Nu er I fi ite Ge esis U ited, LLC: USPTO 1/18/2021 TSDR - TEAS Request for
Reconsideration Exh.. 10.
Real estate agency
services; Real estate listing services for
housing rentals and apartment
rentals; Real estate procurement for
others; Real estate brokerage; Real
estate listing; Commercial and
residential real estate agency services;
Residential real estate age y servi es See also Notice of Allowance
“Genesis of Style” Registration No. 2921251 “operating marketplaces for sellers of real
estate and/or real estate services” recites “real estate services” like Registrant yet the Office registered No.
2921251 in 2005. The Examining Attorney dismissed this point concerning Reg. 2921251 stating, “[t]his
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registration appears to be for services that are predominantly different from or unrelated to those
identified in applicant’s application.” 2/17/2021; TSDR Reconsideration Letter p. 1 line 30.
This statement is puzzling for two reasons. If examining attorney considered Reg. 2921251
“predominantly different from or unrelated to those identified in applicant’s application,” despite the fact
that Reg. 2921251 recited “real estate services” (same as Cited Marks) then this begs the question:
Applicant’s Mark (no recital to “real estate services” at all and none to property management) must be
registrable (even more so) being even more dissimilar to Cited Marks than Registration 2921251 is to
Cited Marks, since Applicant’s Mark obviously lacks “real estate services.” Yet, despite an even greater
dissimilarity to Cited Marks than Reg 2921251, (which registered) examining attorney denied Applicant’s
registration. Likewise, Serial No. ‘690 received the Office’s authorization despite a similar identification
of “real estate services” same as Registrant.
This evidence is probative to show, not thousands of registration using the term “Genesis,” but
that the Office in at least two other applications, one registered and another was authorized. If
Applicant’s mark is dissimilar to these two marks, shouldn’t it receive registration since Applicant’s
identification doesn’t even recite “real estate services” as the above two marks do.
VI. The term “Genesis” does not outweigh the other favorable weights of Applicant’s Mark.
Applicant does not disagree with the importance of words in the marks, but Applicant argues that
the term “Genesis” does not outweigh the favorable points for registration. This Board adheres to the
basic rule - when comparing potentially conflicting marks is that the marks must be considered in their
entireties. See Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA v. New Millennium Sports,
S.L.U., 797 F.3d 1363, 1371, 116 USPQ2d 1129, 1134 (Fed. Cir. 2015); In re Shell Oil Co., 992 F.2d
1204, 1206, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993); Massey Junior Coll., Inc. v. Fashion Inst. of Tech.,
492 F.2d 1399, 1402, 181 USPQ 272, 273-74 (C.C.P.A. 1974).
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Case law holds that despite a shared term, no likelihood of confusion between marks existed.
See, Massey Junior College, Inc. v. Fashion Institute of Technology, 181 USPQ 272 (CCPA 1974) (It is a
violation of the anti-dissection rule to focus upon the “prominent” feature of a mark in determining
“likelihood of confusion,” while ignoring all other elements of the mark.); See, e.g., (cases with common
terms and no likelihood of confusion) Keebler Co. v. Murray Bakery Prods., 866 F.2d 1386 (Fed. Cir.
1989) (PECAN SHORTEES AND PECAN SANDIES - no likelihood of confusion); In re Bed &
Breakfast Registry, 791 F.2d 157 (Fed. Cir. 1986) (BED AND BREAKFAST REGISTRY and BED
AND BREAKFAST INTERNATIONAL sufficiently dissimilar); Wooster Brush Co. v. Prager Brush
Co., 231 USPQ 316 (T.T.A.B. 1986) (no likelihood of confusion between POLY PRO and POLY FLO);
WNS Inc. v. Deck the Walls Inc., 4 USPQ2d 1377 (N.D. Ill. 1986) (DECK THE WALLS and DECK
THE WALLS INC. not confusingly similar); Jacobs v. International Multifoods Corp., 668 F.2d 1234,
212 USPQ 641 (C.C.P.A. 1982) (BOSTON TEA PARTY and BOSTON SEA PARTY - no likelihood of
confusion); Consolidated Cigar Corp. v. R.J. Reynolds Tobacco Co., 491 F.2d 1265 (C.C.P.A. 1974)
(DUTCH APPLE and DUTCH MASTERS sufficiently dissimilar); Basic Vegetable Prods. Inc. v.
General Foods Corp., 165 USPQ 781 (TTAB 1970) (MAGIC and SOUR-MAGIC are not confusingly
similar).
The Applicant posits that its favorable points under du pont outweigh the shared term Genesis.
In In re Electrolyte Labs. Inc., 929 F. 2d 645, 647 (Fed. Cir. 1990) the Federal Circuit held the TTAB
erred by focusing on the “K+” common to both marks where the design of the marks was substantially
different (stating “Electrolytes mark is a composite mark of which the design is a significant feature
thereof….[w]e conclude that Electrolyte’s mark, viewed as a whole, serves to distinguish its goods from
those of others.” In re Electrolyte Labs, Inc. 929 F. 2d at 647 – 648). Further, “[ ] the spoken or
vocalizable element of a design mark, taken without design, need not of itself serve to distinguish the
goods. The nature of stylized letter marks is that they partake of both visual and oral indicia and both
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must be weighed in the context in which they occur.” Id. Applicant’s mark and its design is favorable
under du pont to Applicant.
Cases like those cited above allow this Board to weigh all the favorable points for registration
against the one single point cited by the examining attorney, the “Genesis” term and to reverse the denial.
Even the holding of In re Electrolyte Labs. Inc. alone can reverse the denial. Applicant’s Mark offers a
prominent design, a meaningful definition of “Village”, a dissimilar consumer impression and significant
consumer safeguards in place. Applicant submits these points weigh in favor of registration and
outweigh the one issue of “Genesis”. This is point is especially true in light of the flawed extrinsic
evidence which cannot prove related services and goods between the Parties.
VII. Applicant’s mark is markedly dissimilar to U.S. Registration No. 4604136 (“GV” also ‘136 ) making the likelihood of confusion nonexistent.
Applicant respectfully submits that no likelihood of confusion exists between its mark “GV” and
the “’136” mark. The similarities between the appearance, sound, meaning and commercial impressions
of these marks is de minimis if any even exists. First, ‘136 mark is “GV” alone by itself. Applicant’s
mark is a highly stylized mark appearing in conjunction with Applicant’s design mark – the stylized font,
wrought iron gate symbolic of a “Village” with the term “Genesis.” It is highly unlikely that Applicant’s
mark, appearing as it is, would be confused with ‘136 “GV” given the features of Applicant’s mark.
Viewers seeing Applicant’s mark will be struck by the large design and wording “Genesis
Village” before ever noticing Applicant’s “GV” term. These elements of Applicant’s mark are absent
from ‘136. Further, Applicant contends that its “GV” term is not a dominant component of its mark like
its wrought iron gate or Genesis Village so this term “GV” is of lesser impact on the consumer for
purposes of likelihood of confusion. It is unclear whether to ordinary consumers would even see the
Applicant’s “GV”.
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Applicant’s mark wording creates a different connotation not present in ‘136. As explained
Applicant’s mark connotates a “Village” a place to simply live and work whereas ‘136 standing along is
completely devoid of any such comparable connotation. The literal element differences, Applicant’s
mark sound (Gen-e-sis-Villa-age) has five syllables; ‘136 has only two syllables and is an anacronym not
words. It is more likely that the words “Genesis Village” would be more prominent to the consumers
and used to identify the source of the goods.
1. Applicant’s identification of goods and services is different from ‘136 identification.
A rejection based on ‘136 is improper under 2(d) unless it consists or comprises a mark which so
resembles a mark registered in the Patent and Trademark Office as to be likely, when used on or in
connection with the goods of Applicant to cause confusion. Registration ‘136 identification - “real estate
and real property services, namely, acquisition, agency, and brokerage; real estate and real property
services, namely, management and leasing” is highly different from Applicant. Applicant’s identification
cites none of the services cited by ‘136. Applicant neither manages, acquires, performs agency or
brokerage services; it represents no third parties and provides no services. Thus, the identification of
services do not coincide even remotely. Note that ‘136 services like Cited Marks all recited services to
third parties clients.
Further, Granville Homes (Registrant) search reveals its primary business is the building and
selling homes and its markets using the name “Granville Homes.” Granville Homes business is the
constructions and sale of new homes. Granville Homes – About Granville Homes “43 years” of
homebuilding. See 1/18/2021 TSDR Request for Reconsideration page Exhibits 13 & 14. . Granville
builds and sells private homes to consumers; Applicant rents apartments, it builds and develops no homes.
Because the portion of Applicant’s mark containing the term “GV” is included within the overall
design of the mark itself, it is very evident in a casual view that the source of goods differs from the “GV”
Mark. Thus, a substantial difference in the presentation of the marks exists eliminating any possibility of
22
confusion. The “GV” crest in Applicant’s Mark is a very small portion of its total mark and it is
unlikely that its mark will be remembered as “GV” or abbreviated to “GV” given the complexity of
Applicant’s mark. Also, any suggestion of shortening the Applicant’s Mark to “GV” is highly unlikely
given the substantial differences between the marks. Applicant’s decorative ornate gate, the large circle
above the standard wording, and stylized font, when combined permit the ordinary consumer to
distinguish the marks. Applicant submits no possibly likelihood of confusion can exists between
Applicant’s Mark and ‘136 and therefore asks this Board to dismiss the Examining Attorney’s position.
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CONCLUSION
This Board must reverse the examining attorney’s denial of Applicant’s Mark for these reasons: (1)
the Applicant and Cited Marks have a dissimilar appearance; (2) the Parties’ identifications of goods and
services are not identical; (3) the examining attorney applied the broader, global real estate industry in this
matter, which is contrary to the case law, to conclude the services are related; he failed to consider, as he
must, the differences in the Parties’ goods and services; (4) the extrinsic screenshot evidence is
fundamentally flawed; it cannot show the Parties’ marks are offered under one mark; (5) Applicant’s Mark
commercial impression and meaning is dissimilar to Cited Marks; (6) The conditions under which the
Applicant transacts with consumer’s makes a likelihood of confusion de minimis, if any at all; (7) Cited
Marks are not broad in scope because Registrant deleted, the “buying or selling of real estate” which limited
the Registrant’s scope of services.
Applicant’s mark, when viewed as whole, is markedly dissimilar to U.S. Registration No. 4604136
in appearance, structure, sound and design making the likelihood of confusion nonexistent. Consumers are
highly unlikely to consider ‘136 as a source of confusion given all the reasons cited herein.
For all the above reasons, Applicant asks this Board to reverse the examining attorney and grant
publication.
Respectfully submitted for Applicants,
Date April 13, 2021 By: /Arnold Braun/
Arnold Braun (Reg. No. 54,001)
Medical Diagnostic Laboratory, LLC
2439 Kuser Road
Hamilton, NJ 08690-3303
T: (609) 528-6177