98674911•Nicholson, Herdine O; Faulkner & Rose, Inc
Gesamter Gesetzestext
This Opinion is Not a Precedent of the TTAB Mailed: September 1, 2026 UNITED STATES PATENT AND TRADEMARK OFFICE _____ Trademark Trial and Appeal Board _____ In re Herdine O. Nicholson and Faulkner & Rose, Inc. _____ Serial No. 98674911 _____ Steven Laut of Sherman IP LLP, for Herdine O. Nicholson and Faulkner & Rose, Inc. Daniel Bice, Trademark Examining Attorney, Law Office 128, Travis Wheatley, Managing Attorney. _____ Before Lykos, Goodman and Cohen, Administrative Trademark Judges. Opinion by Goodman, Administrative Trademark Judge: Herdine O. Nicholson and Faulkner & Rose, Inc. (“Applicants”) seek registration on the Principal Register of the standard character mark MAINSAIL REAL ESTATE (REAL ESTATE disclaimed) for services ultimately identified as Real estate brokerage, namely, real estate brokerage services involving the sale of residential homes, condominiums, and commercial properties, including office buildings, retail centers, and hotels, the foregoing services excluding rental of vacation homes, vacation home rental management services, and real estate development and
Serial No. 98674911 - 2 - construction of hotel and vacation rental properties in International Class 36.1 The Trademark Examining Attorney has refused registration of Applicants’ mark under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion with the following Principal Register marks, owned by different entities: (LODGING and DEVELOPMENT disclaimed) for “Real estate development and construction of hotel and vacation rental properties” in International Class 372 and the standard character mark MAINSAIL VACATION RENTALS (VACATION RENTALS disclaimed) for “Real estate services, namely, rental of vacation homes; Real estate services, namely, vacation home rental management services” in International Class 36.3 1 Application Serial No. 98674911 was filed on July 31, 2024, under Section 1(a) of the Trademark Act, 15 U.S.C. § 1051(a), based upon Applicants’ claim of first use anywhere of February 1, 2021 and use in commerce since at least as early as April 1, 2023. Applicants initially sought registration of services identified in Class 35 as well, but withdrew this class after the Examining Attorney issued an initial refusal. Page references to the application record are to the downloadable .pdf version of the USPTO’s Trademark Status & Document Retrieval (TSDR) electronic database. References to the briefs on appeal refer to the Board’s TTABVUE docket system. Applicants’ brief is at 14 TTABVUE. The Examining Attorney’s brief is at 16 TTABVUE. 2 Registration No. 6406158 issued July 6, 2021 (Section 8/15 combined declaration filed). The description of the mark states: “The mark consists of the stylized wording ‘MAINSAIL’ above a horizontal line, which is above the stylized wording ‘LODGING · DEVELOPMENT’. All the foregoing is to the right of three stylized ship sails.” Color is not claimed as a feature of the mark. “LODGING” and “DEVELOPMENT” disclaimed. 3 Registration No. 5902866 issued November 5, 2019, Section 8/15 combined declaration accepted and acknowledged.
Serial No. 98674911 - 3 - When the refusal was made final, Applicants appealed and requested reconsideration. After the Examining Attorney denied the request for reconsideration, the appeal was resumed. We affirm the refusal to register. I. Likelihood of Confusion Section 2(d) of the Trademark Act prohibits registration of a mark that so resembles a registered mark as to be likely, when used on or in connection with the goods or services of the applicant, to cause confusion, or to cause mistake, or to deceive. Trademark Act Section 2(d), 15 U.S.C. § 1052(d). Our determination of likelihood of confusion under Section 2(d) is based on an analysis of all probative facts in the record that are relevant to the likelihood of confusion factors set forth in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (“DuPont”). See also In re Majestic Distilling Co., 315 F.3d 1311, 1315 (Fed. Cir. 2003). We consider each DuPont factor for which there is evidence and argument. See, e.g., In re Guild Mortg. Co., 912 F.3d 1376, 1379 (Fed. Cir. 2019); In re Country Oven, Inc., No. 87354443, 2019 TTAB LEXIS 381, at *2. Varying weight may be assigned to each DuPont factor depending on the evidence presented, and not all DuPont factors are relevant in every case. See In re Charger Ventures LLC, 64 F.4th 1375, 1381 (Fed. Cir. 2023) (“In any given case, different DuPont factors may play a dominant role and some factors may not be relevant to the analysis.”); Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 955 F.3d 994, 998 (Fed. Cir. 2020) (“Not all DuPont factors are relevant in each case, and the weight
Serial No. 98674911 - 4 - afforded to each factor depends on the circumstances. Any single factor may control a particular case.”) (citation omitted). In every Section 2(d) case, two key factors are the similarity or dissimilarity of the marks and the goods or services. See In re i.am.symbolic, llc, 866 F.3d 1315, 1322 (Fed. Cir. 2017); Herbko Int’l, Inc. v. Kappa Books, Inc., 308 F.3d 1156, 1165 (Fed. Cir. 2002); Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 1103 (CCPA 1976) (“The fundamental inquiry mandated by § 2(d) goes to the cumulative effect of differences in the essential characteristics of the goods [or services] and differences in the marks.”). These factors, and others, are discussed below. As explained below, because Applicants’ proposed mark is likely to cause confusion with the cited Registration No. 5902866 for the mark MAINSAIL VACATION RENTALS (VACATION RENTALS disclaimed), we need not address likelihood of confusion based on the other cited registration owned by a different entity. A finding of likelihood of confusion between Applicants’ mark and MAINSAIL VACATION RENTALS suffices by itself to bar registration of Applicants’ mark under Section 2(d); we need not find likelihood of confusion as to the other registration cited by the Examining Attorney. See In re Max Cap. Grp. Ltd., No. 77186166, 2010 TTAB LEXIS 1, at *19-20. We therefore refer to Registration No. 5902866 as the cited registration and MAINSAIL VACATION RENTALS as the cited mark in this decision.
Serial No. 98674911 - 5 - A. Similarity or Dissimilarity of the Services The second DuPont factor considers “[t]he similarity or dissimilarity and nature of the goods or services as described in an application or registration.” DuPont, 476 F.2d at 1361. It is sufficient for a finding of likelihood of confusion if relatedness is established for any service encompassed by the identification within a particular class in the application or registration. See Tuxedo Monopoly, Inc. v. Gen. Mills Fun Grp., Inc., 648 F.2d 1335, 1336 (CCPA 1981). Applicants’ services are: Real estate brokerage, namely, real estate brokerage services involving the sale of residential homes, condominiums, and commercial properties, including office buildings, retail centers, and hotels, the foregoing services excluding rental of vacation homes, vacation home rental management services, and real estate development and construction of hotel and vacation rental properties. The cited registration’s services are: Real estate services, namely, rental of vacation homes; Real estate services, namely, vacation home rental management services. The Examining Attorney provided internet evidence to show the relatedness of vacation home rental services and real estate brokerage services.4 The Examining Attorney’s internet evidence shows that vacation home rental services and real estate brokerage services are frequently offered under the same or similar marks by the same or related entities, including Porter, Property Collective, Dune (Dune Vacation Rental Services/Dune Referral Services LLC), Harris Realty, and Railey (Railey 4 February 8, 2025 Office Action pp. 91-123; May 12 2025 Office Action pp. 8-70.
Serial No. 98674911 - 6 - Realty/Railey Vacations).5 These entities offer services for vacation home rentals which may be, for example, single family homes or condominiums, and for purchasing vacation homes, showing that the relevant services are commonly marketed together and may emanate from a common source. Applicants argue that their amended identification “expressly excludes vacation rental and development services” and therefore, “the Post-amendment, brokerage services are distinct.”6 Although the cited registration is limited to vacation rental home services and vacation rental home management, it is otherwise unrestricted as to channels of trade and classes of consumers. Applicants’ exclusion does not meaningfully limit either, and the exclusion is not a meaningful limitation to the services because as indicated, the evidence shows the services are commonly marketed together. See In re i.am.symbolic, LLC, No. 85044494, 2015 TTAB LEXIS 369, at *9-10, (limiting language “associated with William Adams, professionally known as ‘will.i.am’” was not a meaningful limitation to the goods because it did not change the nature of the goods or how consumers encounter the goods in the marketplace nor did the limitation restrict the classes of consumers) aff’d 866 F.3d 1315. In particular, the record shows that vacation home rental services and real estate brokerage services are commonly offered together by the same or related entities under the same or similar marks and marketed to the same class of consumers. 5 February 8, 2025 Office Action pp. 91, 94, 101, 103; May 12, 2025 Office Action pp. 8, 11, 59, 63, 64, 67. 6 14 TTABVUE 7.
Serial No. 98674911 - 7 - Moreover, consumers will not be aware of the existence of this exclusionary language in Applicants’ identification. Thus, Applicants’ limitation in the recitation of services does not eliminate the relatedness issue because consumers are accustomed to encountering real estate brokerage services and vacation home rental services offered together by the same or related entities under the same or similar marks. The issue is whether the services are so related that consumers encountering similar marks are likely to believe they come from a common source. Based on the Examining Attorney’s evidence, we find that the respective vacation home rental services and real estate brokerage services are sufficiently related. B. Similarity or Dissimilarity of the Trade Channels and Conditions of Sale We consider the “similarity or dissimilarity of established, likely-to-continue trade channels” and “[t]he conditions under which and buyers to whom sales are made, i.e. ‘impulse’ vs. careful, sophisticated purchasing.” DuPont, 476 F.2d at 1361. Because the services of Applicant and Registrant have no meaningful restrictions or limitations as to channels of trade or classes of purchasers, we presume that the goods will be marketed in all normal trade channels and to all normal classes of purchasers for such services. See Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d 1352, 1361 (Fed. Cir. 2000). The classes of consumers are those seeking to purchase properties and to rent vacation homes. As to trade channels, we find that the trade channels overlap because the internet evidence provided by the Examining Attorney shows that providers of vacation home rental services also offer real estate brokerage services to market and
Serial No. 98674911 - 8 - sell vacation home properties. Consumers seeking residential property real estate brokerage services may encounter Registrant’s vacation home rental services in the same marketplace. As to conditions of sale, purchaser sophistication or degree of care may tend to minimize likelihood of confusion. Conversely, impulse purchases of inexpensive items may tend to have the opposite effect. Palm Bay Imps. Inc. v. Veuve Clicquot Ponsardin Fondee En 1772, 396 F.3d 1369, 1376 (Fed. Cir. 2005). We must make our determination based on the least sophisticated consumer. Stone Lion Cap. Partners, L.P. v. Lion Cap. LLP, 746 F.3d 1317, 1325 (Fed. Cir. 2014). Applicants argue “Real estate brokerage transactions commonly exceed $300,000 (per industry norms referenced in the record) and involve agents, inspections, financing, and negotiation.”7 The evidence in the record shows homes priced as low as $199,000 with most well above that amount and reaching over $4 million.8 Additionally, looking to the intrinsic nature of the services themselves, we acknowledge that real estate brokerage services to sell real estate are not “average consumer services,” can be relatively expensive, and would require some degree of care due to their nature and cost. See In re Charger Ventures LLC, 64 F.4th at 1378-79 (noting the Board’s finding that the identified real estate services are “not average consumer services” 7 14 TTABVUE 8. 8 February 8, 2025 Office Action (pp. 107-108); May 12, 2025 Office Action pp. 30-51. The webpages showing listed properties reflect asking prices from well over $100,000 through the $4 million range with many of the properties falling in the $300,000 to $500,000 ranges (approximately 110 properties).
Serial No. 98674911 - 9 - and that the purchaser would exercise elevated care due to the nature and cost of real estate services) (citing Elec. Design & Sales Inc. v. Elec. Data Sys. Corp., 954 F.2d 713, 718 (Fed. Cir. 1992)). We find that even in the case of the least sophisticated purchaser, a decision as important as choosing a residence, or purchasing commercial properties, will be made with some thought and research and a higher degree of care. C. Strength 9 The sixth DuPont factor considers “[t]he number and nature of similar marks in use on similar goods [or services].” DuPont, 476 F.2d at 1361. Applicants argue that MAINSAIL has “nautical suggestiveness and diluted scope” based on the existence of ten active registrations of MAINSAIL formative marks10 “in financial and real estate-adjacent fields.”11 Applicants’ argument in reference to third-party registrations relates to conceptual strength. Tao Licensing, LLC v. Bender Consulting Ltd., No. 92057132, 2017 TTAB LEXIS 437, at *47 (“third-party registration evidence that does not equate to proof of third-party use may bear on conceptual weakness if a term is commonly registered for similar goods or services.”). Conceptual strength is a 9 The fifth DuPont factor examines the extent to which the public perceives the mark as indicating a single source of origin, i.e., its fame or commercial strength. DuPont, 476 F.2d at 1361. As is normally the case in ex parte proceedings, this factor is treated as neutral. See In re Thomas, No. 78334625, 2006 TTAB LEXIS 135, at *18 n.11. 10 Applicants also reference the third-party applications for similar marks they made of record. However, they would be entitled to little, if any, weight in the strength analysis, because “pending applications are not evidence of anything except that the applications were filed on a certain date.” Nike, Inc. v. WNBA Enters., LLC, No. 91160755, 2007 TTAB LEXIS 39, at *38. 11 14 TTABVUE 7.
Serial No. 98674911 - 10 - measure of the cited mark’s distinctiveness, which may be placed “in categories of generally increasing distinctiveness: … (1) generic; (2) descriptive; (3) suggestive; (4) arbitrary; or (5) fanciful.” Two Pesos, Inc. v. Taco Cabana, Inc., 505 U.S. 763, 768 (1992). Registrant’s mark MAINSAIL VACATION RENTALS with a disclaimer of VACATION RENTALS is registered on the Principal Register without a showing of acquired distinctiveness. As a whole, the mark is inherently distinctive, although the strength is somewhat limited by the disclaimed generic or descriptive terms VACATION RENTALS. See Sock It to Me v. Fan, No. 91230554, 2020 TTAB LEXIS 201, at *30 (SOCK IT TO ME for socks “taken as a whole, is inherently distinctive, although its strength is somewhat limited by its first word, SOCK, which is generic for socks.”). Although the cited mark is inherently distinctive as a whole, we may consider whether an inherently distinctive mark is “weak as a source indicator” in the course of the DuPont analysis. See, e.g., In re Fat Boys Water Sports LLC, No. 86490930, 2016 TTAB LEXIS 150, at *23. The record includes ten third-party registrations containing the wording MAIN SAIL or MAINSAIL, either alone or as a component of a mark which were submitted by Applicants to argue that the shared wording MAINSAIL or MAIN SAIL is conceptually weak.12 12 August 8, 2025 Request for Reconsideration pp. 7-22.
Serial No. 98674911 - 11 - However, two of the registrations are the cited registrations themselves: Reg. No. 5902866, MAINSAIL VACATION RENTALS, and Reg. No. 6406158, MAINSAIL LODGING & DEVELOPMENT and design.13 In addition, several registrations appear to be commonly owned. Specifically, Reg. Nos. 6122804 and 3261139 (MAIN SAIL and MAIN SAIL and design) are owned by the same entity and are for a broad range of business consulting, management, marketing, procurement, staffing/personnel, business research, and business technology consulting services in Class 35.14 Reg. No. 6122804 also lists IT and technical support services in Class 42, including monitoring computer network systems, troubleshooting web/database applications and hardware/software issues, and consulting regarding computer networks and hardware/software systems. Reg. No. 3261139 also lists Class 37 computer installation, repair, and maintenance services for computer hardware, systems, and networks. Reg. Nos. 3557604 and 3557605 (MAINSAIL PARTNERS and MAINSAIL PARTNERS and design) are also owned by the same entity and both are for venture capital and private equity funding services for emerging and growing private companies in Class 36.15 The remaining registrations owned by different entities are Reg. No. 7648991 MAINSAIL for downloadable software and online non-downloadable software used for tracking, monitoring, and processing freight and cargo, and for managing freight 13 August 8, 2025 Request for Reconsideration pp. 14-17. 14 August 8, 2025 Request for Reconsideration pp. 7-9. 15 August 8, 2025 Request for Reconsideration pp. 12-13.
Serial No. 98674911 - 12 - and cargo handling facilities in Classes 9 and 42; Reg. No. 3464597 MAINSAIL for pesticides for agricultural and non-agricultural use in Class 5; Reg. No. 4795573 MAINSAIL GLOBAL for aeration diffusers used in the treatment of wastewater in Class 11 and for construction, installation, maintenance, repair, and refurbishment of wastewater aeration systems in Class 37; and Reg. No. 7615925 MAINSAIL MEDIA for publishing of books, e-books, audio books, music and illustrations in Class 41.16 Third-party registrations featuring goods or services dissimilar or unrelated to those in the application and the cited registration are of little probative value to show weakness. See Omaha Steaks Int’l v. Greater Omaha Packing Co., 908 F.3d 1315, 1325 (Fed. Cir. 2018) (error to rely on third-party evidence of similar marks for dissimilar goods, as Board must focus on goods/services “shown to be similar”). Although Applicants argue that many of these registrations are in “financial and real estate-adjacent fields,” they have offered no explanation nor evidence to show the goods or services listed in the third-party MAIN SAIL/MAINSAIL and MAINSAIL- formative registrations are “similar” to Registrant’s vacation rental home real estate services. See In re i.am.symbolic, llc, 866 F.3d 1315, 1328 (Fed. Cir. 2017) (disregarding third-party registrations for goods in other classes where the proffering party “has neither introduced evidence, nor provided adequate explanation to support a determination that the existence of I AM marks for goods in other classes, ... support 16 August 8, 2025 Request for Reconsideration pp. 10, 18-22. All of the MAINSAIL formative registrations, including the cited registrations, have disclaimed wording (i.e, VACATION RENTALS, LODGING and DEVELOPMENT, PARTNERS, GLOBAL, MEDIA).
Serial No. 98674911 - 13 - a finding that registrants’ marks are weak with respect to the goods identified in their registrations”). Thus, the third-party registrations have less probative value to show the conceptual weakness of MAINSAIL/MAIL SAIL in the real estate industry. We take judicial notice of the dictionary definition for MAINSAIL.17 See Quiktrip W., Inc. v. Weigel Stores, Inc., 984 F.3d 1031, 1035 (Fed. Cir. 2021); Made in Nature, LLC v. Pharmavite LLC, No. 91223352, 2022 TTAB LEXIS 228, at *26 (in connection with evaluating the cited mark’s conceptual strength, we may consider dictionary definitions; the Board took judicial notice of dictionary definitions). Arguably, in connection with oceanfront or beach properties, the term MAINSAIL may suggest sailing or coastal living and therefore has a somewhat suggestive significance when used in connection with vacation rental real estate services, particularly in coastal or beachfront locations. We find MAINSAIL to have some conceptual weakness resulting in a slightly narrower scope of protection than an arbitrary mark. This DuPont factor weighs slightly against likelihood of confusion. D. Similarity or Dissimilarity of the Marks Under the first DuPont factor, we consider the similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation, and commercial 17 AMERICAN HERITAGE DICTIONARY (ahdictionary.com) 1. The principal sail of a vessel (accessed August 28, 2026). The Board may take judicial notice of dictionary definitions, including online dictionaries that exist in printed form or regular fixed editions. In re Red Bull GmbH, No. 75788830, 2006 TTAB LEXIS 136, at *7; Univ. of Notre Dame du Lac v. J.C. Gourmet Food Imps. Co., No. 91061847, 1982 TTAB LEXIS 146, at *7, aff’d, 703 F.2d 1372 (Fed. Cir. 1983).
Serial No. 98674911 - 14 - impression. Palm Bay Imps., 396 F.3d at 1371 (citing DuPont, 476 F.2d at 1361). Similarity in any one of these elements may be sufficient to find the marks confusingly similar. In re Davia, No. 85497617, 2014 TTAB LEXIS 214, at *4. Marks must be considered in their entireties, but “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 mark, provided the ultimate conclusion rests on consideration of the marks in their entireties.” In re Nat’l Data Corp., 753 F.2d 1056, 1058 (Fed. Cir. 1985). Disclaimed matter that is descriptive or generic of a party’s services is typically less significant or less dominant when comparing marks. Citigroup Inc. v. Cap. City Bank Grp., Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1257 (Fed. Cir. 2011) (when a mark consists of two or more words, some of which are disclaimed, the word not disclaimed is generally regarded as the dominant or critical term) (citing In re Dixie Rests. Inc., 105 F.3d 1405, 1407 (Fed. Cir. 1997)); In re Hughes Furniture Indus., 2015 TTAB LEXIS 65, at *16 (disclaimed terms not dominant portion of mark) (citations omitted). The test under the first DuPont factor is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial impression that confusion as to the source of the services offered under the respective marks is likely to result. Coach Servs., Inc. v. Triumph Learning LLC, 668 F.3d 1356, 1368 (Fed. Cir. 2012). The focus is on the recollection of the average purchaser, who normally retains a general, rather than specific, impression of trademarks. See Inter IKEA Sys. B.V. v.
Serial No. 98674911 - 15 - Akea, LLC, No. 91196527, 2014 TTAB LEXIS 166, at *17; Sealed Air Corp. v. Scott Paper Co., No. 91055167, 1975 TTAB LEXIS 236, at *6. The cited mark is MAINSAIL VACATION RENTALS (VACATION RENTALS disclaimed) and Applicants’ mark is MAINSAIL REAL ESTATE (REAL ESTATE disclaimed), with both in standard characters. In view of the disclaimers in each mark (VACATION RENTALS and REAL ESTATE), the dominant term in each mark is MAINSAIL which is identical in sound, appearance, meaning and commercial impression. See In re Allegiance Staffing, No. 85663950, 2015 TTAB LEXIS 180, at *11 (“Because descriptive words have little source-indicating significance, it is appropriate that we give less weight”). The lead element MAINSAIL in each of the marks has a position of prominence, as the first word in each mark and the term that consumers likely will remember. Presto Prods. v. Nice-Pak Prods., No. 91074797, 1988 TTAB LEXIS 60, at *8 (“[I]t is often the first part of a mark which is most likely to be impressed upon the mind of a purchaser and remembered ....”). Applicants argue that MAINSAIL REAL ESTATE “evokes brokerage of permanent property transfers, while the cited marks emphasize hospitality-focused services. The disclaimed term REAL ESTATE amplifies the difference in commercial impression.”18 Here, the dominant element of both marks is MAINSAIL. The other wording in the two marks, i.e., VACATION RENTALS and REAL ESTATE is descriptive or 18 14 TTABVUE 8.
Serial No. 98674911 - 16 - generic matter which has been disclaimed by registrant and Applicants, respectively, and these terms contribute very little to the commercial impressions created by the two marks. Moreover, any dissimilarity in the marks that might result from the use of different descriptive or generic wording is greatly outweighed by the marks’ basic similarity–their shared use of the MAINSAIL. While differences admittedly exist between the marks due to the disclaimed terms, when considered in their entireties, Applicants’ MAINSAIL REAL ESTATE mark is substantially similar to Registrant’s MAINSAIL VACATION RENTALS mark. Additionally, even if consumers were to notice the differences in the respective marks, they may well believe that due to the shared term MAINSAIL the real estate services offered by Applicants under their MAINSAIL REAL ESTATE mark represents an expanded line of real estate services from the same source as the company which offers vacation rentals under the MAINSAIL VACATION RENTALS mark. When compared in their entireties, we find the marks are similar in sound and appearance and are likely to create substantially similar commercial impressions upon the minds of prospective purchasers. E. Actual Confusion The seventh DuPont factor considers the nature and extent of any actual confusion. DuPont, 476 F.2d at 1361.
Serial No. 98674911 - 17 - Applicants argue “there also is no evidence of actual consumer confusion.”19 However, “uncorroborated statements of no known instances of actual confusion are of little evidentiary value.” In re Majestic Distilling Co., 315 F.3d at 1317. Moreover, in the context of an ex parte appeal, there is no opportunity to hear from the registrant about whether it is aware of any reported instances of confusion. See In re Opus One, Inc., No. 75722593, 2001 TTAB LEXIS 707, at *19-20 (citations omitted) (“The fact that an applicant in an ex parte case is unaware of any instances of actual confusion is generally entitled to little probative weight in the likelihood of confusion analysis, inasmuch as the Board in such cases generally has no way to know whether the registrant likewise is unaware of any instances of actual confusion, nor is it usually possible to determine that there has been any significant opportunity for actual confusion to have occurred.”). In any event, it is unnecessary to show actual confusion in establishing a likelihood of confusion. Weiss Assocs. Inc. v. HRL Assocs. Inc., 902 F.2d 1546, 1549 (Fed. Cir. 1990). Therefore, we find this factor is neutral. F. Any Other Established Fact Probative of the Effect of Use The thirteenth DuPont factor examines “any other established fact probative of the effect of use.” DuPont, 476 F.2d at 1361. Rarely invoked, the thirteenth DuPont factor is intended to accommodate “the need for flexibility in assessing each unique set of facts.” In re Strategic Partners, No. 77903451, 2012 TTAB LEXIS 80 at *6. The 19 14 TTABVUE 8.
Serial No. 98674911 - 18 - thirteenth DuPont factor does consider evidence of bad faith adoption. L.C. Licensing Inc. v. Berman, No. 91162330, LEXIS 2008 TTAB LEXIS 756, at * 20. Applicants argue that no bad faith exists.20 However, Applicants’ alleged good faith adoption of the involved mark does not aid Applicants in establishing the absence of a likelihood of confusion. See Apple Computer v. TVNET.net Inc., No. 91168875 2007 TTAB LEXIS 80 at *14 n.7 (“While evidence of bad faith adoption typically will weigh against an applicant, good faith adoption typically does not aid an applicant attempting to establish no likelihood of confusion.”) (citing J&J Snack Foods Corp. v. McDonald’s Corp., 932 F.2d 1460 (Fed. Cir. 1991)). II. Conclusion As a final step, we “weigh the DuPont factors used in [our] analysis and explain the results of that weighing.” In re Charger Ventures, 64 F.4th at 1384 (emphasis omitted). The similarity of the marks, the relatedness of the services, the similar trade channels and classes of consumers weigh in favor of finding a likelihood of confusion. Purchasing conditions weigh against such a finding; the strength of the mark under the sixth factor also weighs slightly against confusion. The remaining DuPont factors are neutral. On balance, however, the conditions of sale and the conceptual weakness in the cited mark that weigh against confusion are outweighed by the similarity of the marks, the relatedness of the services, the overlapping trade channels, and similar classes of consumers. Accordingly, we find confusion likely with cited Registration 20 14 TTABVUE 8. Applicants misidentify this consideration as the twelfth factor.
Serial No. 98674911 - 19 - No. 5902866 (MAINSAIL VACATION RENTALS). See e.g., In re Charger Ventures LLC, 64 F.4th at 1380 (affirming the Board’s finding that the first, second, and third Dupont factors outweighed findings of some commercial weakness in the term SPARK and sophistication of consumers for real estate services). Decision: The Section 2(d) refusal to register Applicants’ mark MAINSAIL REAL ESTATE is affirmed.
Was bedeutet dieser Text für Ihre Situation?
Kostenlose und unverbindliche Beratung
Schildern Sie uns Ihre Situation. Unser Team meldet sich per E-Mail bei Ihnen für Ihre Beratung.
Setzen Sie Ihre Recherche in ChatGPT oder Claude fort
Verbinden Sie Omnilex, um den Rechtskorpus über Ihren KI-Assistenten zu durchsuchen.