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Trademark Trial and Appeal Board Electronic Filing System. http://estta.uspto.gov
ESTTA Tracking number: ESTTA1059236
Filing date: 06/01/2020
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Proceeding 91235046
Party PlaintiffHomes for Heroes, Inc.
CorrespondenceAddress
CYNTHIA JOHNSON WALDENFISH & RICHARDSON PCPO BOX 1022MINNEAPOLIS, MN 55440-1022UNITED [email protected], [email protected], [email protected], [email protected]
Submission Brief on Merits for Plaintiff
Filer's Name Sarah B. Kelleher
Filer's email [email protected], [email protected], [email protected]
Signature /Sarah B. Kelleher/
Date 06/01/2020
Attachments Homes for Heroes - Opening Brief.pdf(1608578 bytes )
IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE TRADEMARK TRIAL AND APPEAL BOARD
Opposition No.: 91235046
TRIAL BRIEF FOR OPPOSER HOMES FOR HEROES, INC.
Cynthia J. Walden Sarah B. Kelleher FISH & RICHARDSON P.C. Postal Address
P.O. Box 1022 Minneapolis, MN 55440-1022 Courier Mail Address:
One Marina Park Drive Boston, MA 02210
Telephone: (617) 542-5070
Facsimile: (617) 542-8906
[email protected]; [email protected]
Attorneys for Opposer Homes for Heroes, Inc.
HOMES FOR HEROES, INC.
Opposer,
v. DEALS 4 HEROES, LLC
Applicant.
i
TABLE OF CONTENTS
I. INTRODUCTION ......................................................................................................................... 1
II. DESCRIPTION OF THE RECORD ............................................................................................. 2
III. STATEMENT OF THE ISSUES .................................................................................................. 2
IV. RECITATION OF THE FACTS ................................................................................................... 2
A. OPPOSER AND ITS HOMES FOR HEROES MARKS ................................................. 2
1. Homes for Heroes’ Mission ................................................................................. 2
2. Homes for Heroes Expands Its ‘Deals’ ............................................................... 3
3. Homes for Heroes’ Presence in The Marketplace ............................................... 5
4. Opposer’s Incontestable Registrations for HOMES FOR HEROES ................. 12
5. Homes for Heroes’ Successful Enforcement Efforts ......................................... 13
B. APPLICANT AND ITS DEALS 4 HEROES MARK ................................................... 15
C. THE USPTO’S TREATMENT OF FOR HEROES MARKS ........................................ 15
V. ARGUMENT ............................................................................................................................... 16
A. OPPOSER HAS STANDING AND PRIORITY OF USE ............................................. 16
B. REGISTRATION OF APPLICANT’S SIMILAR MARK FOR SERVICES NEARLY IDENTICAL TO OPPOSER’S IS LIKELY TO CAUSE CONFUSION ...................... 16
1. The Parties’ Services Are Identical or Nearly Identical .................................... 18
2. The Distinctive Elements of The Marks Are Identical ...................................... 20
3. HOMES FOR HEROES Is A Strong and Distinctive Mark .............................. 24
4. There Are No Other Registrations That Include FOR HEROES for Similar Website Directory, or Related Advertising and Business Information Services .............................................................................................................. 28
5. The Trade Channels and Conditions of Sale Are The Same ............................. 31
6. The Relevant Consumers Exercise a Relatively Low Level of Care ................. 32
7. Doubt Must Be Resolved Against Applicant ..................................................... 32
VI. CONCLUSION............................................................................................................................ 33
ii
TABLE OF AUTHORITIES
Page(s)
Cases
Am. Airlines v. United Serv. Ass’n for Healthcare, 1997 T.T.A.B. LEXIS 284 (T.T.A.B. May 15, 1997) .......................................................................... 32
AMF Inc. v. American Leisure Prods., Inc., 177 U.S.P.Q. 268 (C.C.P.A. 1973) ................................................................................................. 28, 30
Apple Computer v.TVNET.Net, Inc., 90 U.S.P.Q.2d 1393 (T.T.A.B. 2007) ............................................................................................. 18, 19
Bose Corp. v. QSC Audio Products, Inc., 63 U.S.P.Q.2d 1303 (Fed. Cir. 2002) ................................................................................................... 17
Bridgestone Americas Tire Operations, LLC v. Federal Corp., 102 U.S.P.Q.2d 1061 (Fed. Cir. 2012) ........................................................................................... 20, 21
In re Chatam Int’l Inc., 71 U.S.P.Q.2d 1944 (Fed. Cir. 2004) ....................................................................................... 21, 22, 23
In re Detroit Athletic Co., 128 U.S.P.Q.2d 1047 (Fed. Cir. 2018) ................................................................................................. 21
In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 (C.C.P.A. 1973) ....................................................................................................... 17
Fossil Inc. v. The Fossil Group, 49 U.S.P.Q.2d 1451 .............................................................................................................................. 21
In re George Weston Ltd., 228 U.S.P.Q. 57 (T.T.A.B. 1985) ......................................................................................................... 24
Hewlett-Packard Co. v. Packard Press, Inc., 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002) ................................................................................................... 33
In re Hyper Shoppes (Ohio), Inc., 6 U.S.P.Q.2d 1025 (Fed. Cir. 1988) ..................................................................................................... 33
Lipton Indus., Inc. v. Ralston Purina Co., 213 U.S.P.Q.2d 185 (C.C.P.A. 1982) ................................................................................................... 16
In re Mighty Leaf Tea, 94 U.S.P.Q.2d 1257 (Fed. Cir. 2010) ................................................................................................... 33
Octocom Sys., Inc. v. Houston Computer Servs., Inc., 16 U.S.P.Q.2d 1783 (Fed. Cir. 1990) ................................................................................................... 18
iii
Olde Tyme Foods, Inc. v. Roundy’s, Inc., 22 U.S.P.Q.2d 1542 (Fed. Cir. 1992) ................................................................................................... 28
Packard Press, Inc. v. Hewlett-Packard Co., 56 U.S.P.Q.2d 1351 (Fed. Cir. 2000) ................................................................................................... 31
Recot, Inc. v. Becton, 54 U.S.P.Q.2d 1894 (Fed. Cir. 2000) ................................................................................................... 32
Remington Products, Inc. v. N. Am. Philips Corp., 13 U.S.P.Q.2d 1444 (Fed. Cir. 1990) ................................................................................................... 24
In re Research Trading Corp., 230 U.S.P.Q. 49 (Fed. Cir. 1986) ......................................................................................................... 32
Ritchie v. Simpson, 50 U.S.P.Q.2d 1023 (Fed. Cir. 1999) ................................................................................................... 16
San Fernando Elec. Mfg. Co. v. JFD Electronics Components Corp., 196 U.S.P.Q. 1 (C.C.P.A. 1977) ........................................................................................................... 32
Se Morton-Norwich Prod. Inc. v. S.C. Johnson & Son, Inc., 189 U.S.P.Q. 413 (C.C.P.A. 1976) ....................................................................................................... 23
In re SL&E Training Stable, Inc., 88 U.S.P.Q.2d 1216 (T.T.A.B. 2008) ................................................................................................... 20
In re St. Helena Hosp., 113 U.S.P.Q.2d 1082 (Fed. Cir. 2014) ................................................................................................. 21
Stone Lion Capital Partners, L.P. v. Lion Capital LLP, 110 U.S.P.Q. 1157 (Fed. Cir. 2014) ......................................................................................... 20, 31, 32
Stratus Networks, Inc. v. UBTA-UBET Commc’ns Inc., 2020 U.S.P.Q. 2d 10341 (Fed. Cir. 2020) ...................................................................................... 28, 31
TBC Corp. v. Holsa, Inc., 126 F.3d 1470, 44 U.S.P.Q.2d 1315 (Fed. Cir. 1997) .......................................................................... 33
Van Pelt & Brown, Inc. v. John Wyeth & Bro., Inc., 42 C.C.P.A. 1033 (C.C.P.A. 1947)....................................................................................................... 21
In re West Point-Pepperell, Inc., 175 U.S.P.Q. 558 (C.C.P.A.1972) ........................................................................................................ 21
Zheng Cai v. Diamond Hong, Inc., 127 U.S.P.Q.2d 1797 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 1550, 203 L. Ed. 2d 713 (2019) ............................................................................................................................................ 20
Statutes
Lanham Act Section 2 (d), 15 U.S.C. § 1052(d) ............................................................................... 1, 16, 33
1
I. INTRODUCTION
Opposer Homes for Heroes, Inc. (“Homes for Heroes” or “Opposer”) has owned trademark rights
in the mark HOMES FOR HEROES and the design mark since at least as early as
2002 and 2005, respectively. Opposer is the owner of all right, title, and interest in and to all common
law rights associated with these marks and is the owner of U.S. Registration Nos. 4,399,086, 2,904,909,
4,379,642 and 4,379,639 (“HOMES FOR HEROES Marks”), among others. Homes for Heroes is the
largest nationwide network of affiliate real estate, mortgage, and local business specialists in the U.S. that
assists first responders, law enforcement, veterans, and other heroes with obtaining discounts on goods
and services in various industries. Homes for Heroes offers advertisement and information services in
connection with its HOMES FOR HEROES trademarks, including through an online directory at
www.homesforheroes.com/deals that links hero consumers to third party businesses that offer deals and
discounts specifically for them.
Over fourteen years after Opposer first began using the HOMES FOR HEROES mark, Applicant,
Deals 4 Heroes, LLC (“Deals 4 Heroes” or “Applicant”) filed an application to register DEALS 4
HEROES for nearly identical advertising, directory, and business information services targeting first
responders heroes. Registration and use of DEALS 4 HEROES is likely to cause consumer confusion in
the marketplace with Opposer’s HOMES FOR HEROES Marks. Accordingly, this opposition should be
sustained and Applicant’s application to register the DEALS 4 HEROES mark (“DEALS 4 HEROES
Mark”) as shown in Application Serial No. 86/919,998 (the “Application”) should be refused under
Section 2 (d) of the Lanham Act, 15 U.S.C. § 1052(d).
2
II. DESCRIPTION OF THE RECORD
The evidence of record in this proceeding consists of the following:
The files of the trademark application involved (U.S. Serial No. 86/919,998) in this opposition.
The files of the trademark registrations of Opposer (U.S. Reg. Nos. 4,399,086, 2,904,909,
4,379,639 & 4,379,642) submitted with the trial testimony of Christopher Bowles. T.T.A.B.VUE
No. 35.
The trial testimony of Christopher Bowles, General Manager of Homes for Heroes, including the
exhibits submitted therewith. T.T.A.B.VUE No. 35.
The trial testimony of Joseph Caldwell, Member and Owner of Deals 4 Heroes, including the
exhibits submitted therewith. T.T.A.B.VUE No. 40.
The trial testimony of Tyler Harris, Member and Owner of Deals 4 Heroes, including the
exhibits submitted therewith. T.T.A.B.VUE No. 41.
Applicant’s Amended Notice of Reliance on printed publications and third party registrations.
T.T.A.B.VUE No. 44.
Applicant’s First Notice of Reliance on printed publications and third party registrations,
including the exhibits submitted therewith. T.T.A.B.VUE No. 38.
III. STATEMENT OF THE ISSUES
1. Whether a likelihood of confusion exists between Applicant’s DEALS 4 HEROES Mark as
set forth in the Application and Opposer’s registered HOMES FOR HEROES Marks.
2. Whether registration of Applicant’s DEALS 4 HEROES Mark will create a false suggestion
of a connection with Opposer.
IV. RECITATION OF THE FACTS
A. OPPOSER AND ITS HOMES FOR HEROES MARKS
1. Homes for Heroes’ Mission
Homes for Heroes was founded in 2002 by Ruth Johnson, a real estate broker who was inspired to
help first responders after watching their selfless acts in response to the 9/11 attack in New York, New
3
York. (35 T.T.A.B.VUE Exhibit 5 at p. 282). Homes for Heroes’ purpose is to recognize the service of
individuals who serve their country and communities as “heroes,” including active and reserve military
members and veterans, peace officers, firefighters, emergency medical technicians, law enforcement, first
responders, healthcare professionals and teachers (collectively hereinafter “Heroes”). (35 T.T.A.B.VUE ¶
2). Homes for Heroes rendered discounted real estate and mortgage brokerage services directly and
through affiliates, including real estate agents and brokers, and lenders who offer discounts in connection
with the purchase, sale, or refinancing of a home. (Id. at ¶16). Homes for Heroes has continuously
offered these services under the HOMES FOR HEROES mark since 2002. (Id. at ¶16).
2. Homes for Heroes Expands Its ‘Deals’
Over the last two decades, Homes for Heroes has grown rapidly and gained a national reputation
for providing discount services to Heroes, including through affiliates across the United States. (Id. at ¶4).
In 2007, this expansion included the addition of broader types of deals outside the real estate and
mortgage financing industries. (Id. at ¶17). Specifically, Homes for Heroes offered, and continues to
offer, a directory of local businesses under the brand HOMES FOR HEROES that provide deals on a
wide range of goods and services via its website at www.homesforheroes.com (“Homes for Heroes
Website”). (Id. at ¶22). The specific domain for the directory webpage is
www.homesforheroes.com/deals. (Id.).
In order to offer these deals, Homes for Heroes began working with non-real estate related
businesses to advertise and promote discounts and deals to Heroes. (Id. ¶¶ 23-24). Homes for Heroes
refers to these businesses as Homes for Heroes Business Affiliates or simply as Affiliates. (Id. at ¶18).
An example of local deals offered through Homes for Heroes Business Affiliates in South Carolina is
illustrated on the Homes for Heroes Website as shown below:
4
(35 T.T.A.B.VUE Exhibit 6).
Opposer’s Homes for Heroes Business Affiliates include a wide range of companies, including
moving companies, storage companies, home remodeling companies, carpet cleaners, lawn care
5
companies, pest control companies, plumbers, electrical companies, security companies, retailers, and
restaurants. (Id.). Homes for Heroes has relationships with its Business Affiliates that range from large
international corporations to smaller local businesses, including but not limited to Home Depot, Target,
Liberty Mutual, Farmer’s Insurance, State Farm, Allstate, Fidelity National Title Company, Columbia
retailer, Under Armour, 1-800-Flowers.com, Carhartt, Merry Maids, Moriarity Agency local to Colorado
and Brunt Insurance & Financial Services local to Florida, HomeTeam Inspection service of South
Carolina, Murray Law Offices of South Carolina, Southern Smiles Orthodontics of South Carolina, David
Edwards Toyota of South Carolina, Candid Home Inspections of South Carolina, Curtis & Croft, LLC
law firm of South Carolina, and Madison Homebuilders local to South Carolina. (Id. at pp. 322-23 and
362). Homes for Heroes has previously described these affiliates as “Friends of Heroes” but has referred
to them as “Homes for Heroes Business Affiliates” under the “Deals” portion of the Homes for Heroes
Website for the last several years (35 T.T.A.B.VUE ¶18).
Homes for Heroes Business Affiliates pay Homes for Heroes either a portion of the proceeds
from consumers’ purchases of the discounted goods or services or a flat fee to be listed in the HOMES
FOR HEROES directory. (Id. at ¶25). In addition to being listed in the online directory, Homes for
Heroes Business Affiliates also gain the benefit of grassroots marketing offered by Homes for Heroes.
(Id. at ¶27). As part of the affiliate program, affiliates have the ability to license and use the HOMES
FOR HEROES Marks in order to advertise real estate and mortgage savings and the deals and discounts
offered by other affiliates. (Id. at ¶36). These deals and discounts include, e.g., 20% off home
improvement goods at Target, a 20% discount at 1-800-Flowers.com, and a 40% discount on credit repair
services from Credit Law Center. (35 T.T.A.B.VUE Exhibit 6 at pp. 322-397).
3. Homes for Heroes’ Presence in The Marketplace
Since at least as early as 2007, Homes for Heroes has used and continues to use the HOMES FOR
HEROES Marks to identify itself as the source of the online directory and related advertising, marketing,
and promotional services, including on the Homes for Heroes Website at
www.homesforheroes.com/deals. (35 T.T.A.B.VUE ¶¶20-22). The Homes for Heroes Website includes a
6
directory by state of deals with a separate webpage for each deal that includes a link, directing consumers
to that specific affiliate’s business and deal(s). (Id. at ¶22 and Exhibit 6). The Homes for Heroes Website
provides additional information on its Frequently asked Questions page that advertises “Local Business
Deals” in bold type and underneath it states “[w]hen heroes use our local business affiliates to make every
day home-related purchases, they receive special money-savings hero deals” and the Deals Webpages
include the descriptive phrase “Local Business Deals” in bolded red text in the center of the webpage that
allows consumers to search by state. (35 T.T.A.B.VUE Exhibit 6 at pp. 312 and 324).
In 2013, as Homes for Heroes continued to grow, it expanded its directory services to increase the
marketing budget, staff resources for those devoted to publicizing and growing the number and type of
businesses represented, and to utilize real estate agent and lender affiliates for promotion of the discount
program. (35 T.T.A.B.VUE ¶¶23-24).
Through the date of this action, Homes for Heroes’ network of affiliates includes 2,500 affiliates,
including the Homes for Heroes Business Affiliates across all 50 states and Homes for Heroes has
provided discounts to over 25,000 Heroes totaling more than $40 million in savings.1 (Id. at ¶13-14).
Homes for Heroes has sold over $5 billion in real estate through its affiliates in connection with the
HOMES FOR HEROES Marks, and has partnered with over 700 businesses, as listed on its HOMES
FOR HEROES online business affiliate directory. (Id. at ¶¶24-27). Homes for Heroes’ affiliates market
Homes for Heroes as the central source of savings for Heroes, including but not limited to face-to-face
interactions with consumers such as hosting events that focus on serving Heroes or visiting the workplace
of Heroes like fire stations or police stations. (Id.). To aid in promoting its discounted real estate services,
Homes for Heroes provides affiliates with marketing materials branded with the HOMES FOR HEROES
Marks. (35 T.T.A.B.VUE Exhibit 1, p. 53).
1 To date, Homes for Heroes has continued to expand with over 3,300 affiliates, over 36,000 Heroes served, and more than $60 million in savings.
7
In marketing these events, affiliates often use the HOMES FOR HEROES Marks prominently to
identify the source of the discount goods and services. (Id.). For example, affiliates in Belleville, Illinois
promoted a “Ribbon Cutting and Grand Opening Celebration” to promote the substantial discounts
offered by the program as shown on the following page. (35 T.T.A.B.VUE Exhibit 5, p. 286).
8
The real estate affiliates utilize these materials and use the HOMES FOR HEROES Marks prominently
on extensive advertising to promote the extent of their discount services as shown below.
9
10
11
Similar marketing instruction is not necessary for the non-real estate business deals as those deals are
advertised and linked to from the Homes for Heroes Website that prominently uses the HOMES FOR
HEROES Marks. (Id. at p. 322).
Homes for Heroes has received state and national awards for its services, including the American
Red Cross 2010 Social Entrepreneur Award. (Id. at 4, Exhibit 5 at p. 409). Additionally, Homes for
Heroes has received local and national media coverage, applauding its success in growing a business that
gives back to those who serve their communities, including local news articles in Lee County, Florida,
Aberdeen, South Dakota, Chelsea, Alabama, Fresno, California, Mishawaka, Indiana, and Stafford,
Texas, and being featured on Fox News, ABC News, CNN, CBS, NBC and MilitaryTimes, as early as
2014. (35 TTAVUE ¶5, pp. 287-308, and 412). The Minnesota Business Magazine also ran an article in
2010 titled HOMES FOR HEROES for special recognition of social entrepreneurship, which touted
Homes for Heroes’ reputation and mentioned that Homes for Heroes recently added the discount program
with “a listing of service providers who offer discounts to heroes." (Id. at p. 282). That same article
12
mentioned that Homes for Heroes has spent a good deal of energy and resources protecting its
trademarks. (Id.).
4. Opposer’s Incontestable Registrations for HOMES FOR HEROES
Homes for Heroes is the owner of the following incontestable registrations:
Registration No. 4,399,086, issued on September 10, 2013, of HOMES FOR HEROES for the
following services in Class 35:
Administration of a discount program for enabling participants to obtain discounts on goods and services through businesses and organizations offering savings to military members and veterans, peace officers, firefighters, and emergency medical technicians, and other community heroes; providing a website permitting users to locate businesses and organizations providing savings to military members and veterans, peace officers, firefighters, emergency medical technicians, and other community heroes, and links to the websites of such participating businesses and organizations; providing a website permitting prospective offerors of savings to military members and veterans, peace officers, firefighters, emergency medical technicians, and other community heroes to join the discount program; advertising and marketing of a discount program for enabling participants to obtain discounts and goods and services through businesses and organizations offering savings to military members and veterans, peace officers, firefighters, emergency medical technicians, and other community heroes; providing a website which features advertisements for businesses and organizations providing savings to military members and veterans, peace officers, firefighters, emergency medical technicians, and other community heroes;
Registration No. 2,904,909, issued on November 23, 2004, of HOMES FOR HEROES for
“mortgage and title brokerage, real estate brokerage, mortgage lending services” in Class 36;
Registration No. 4,379,639, issued on August 6, 2013, of for “mortgage and
title insurance brokerage, real estate brokerage, mortgage lending services, directly and through
a network of affiliates” in Class 36; and
Registration No. 4,379,642, issued on August 6, 2013, of for “mortgage
13
and title insurance brokerage, real estate brokerage, mortgage lending services, directly and
through a network of affiliates, and charitable purposes related thereto” in Class 36 (35
T.T.A.B.VUE ¶¶3-9). In all but Registration No. 2,904,909, Homes for Heroes entered a
disclaimer for HOMES. (35 T.T.A.B.VUE Exhibit 1, p. 16; Exhibit 2, p. 97; Exhibit 3, p. 150;
and Exhibit 4, p. 201).
5. Homes for Heroes’ Successful Enforcement Efforts
Homes for Heroes takes strong measures to protect the valuable goodwill associated with its
HOMES FOR HEROES Marks by monitoring for unauthorized use of the HOMES FOR HEROES
Marks, monitoring third party applications to register marks similar to the HOMES FOR HEROES Marks
in the USPTO or with various secretaries of state, and taking the appropriate enforcement actions to stop
unauthorized use and registration of the HOMES FOR HEROES Marks and confusingly similar marks by
third parties. (35 T.T.A.B.VUE ¶30).
Opposer monitors and maintains records of third party trademark applications that include a text
element ending with the phrase FOR HEROES, including for Class 35 services. (Id. at ¶31). When an
applicant files an application for a trademark that is confusingly similar to one or more of the HOMES
FOR HEROES Marks with the USPTO, Opposer will take appropriate action to address these concerns
with the applicant and these efforts may include filing a Notice of Opposition and/or an extension of time
to oppose the application. Homes for Heroes’ enforcement efforts have been successful, including
successfully preventing the use and registration of various other FOR HEROES-formative marks. (Id. at
¶¶30-34).
By way of example, in 2015, Homes for Heroes filed a Notice of Opposition against the third
party application to register DEALS FOR HEROES for “advertising and directory services, namely,
promoting the services of others by providing a web page featuring links to the websites of others” in
Class 35 on the grounds of priority and likelihood of confusion and false suggestion of a connection with
the HOMES FOR HEROES Marks. (Id. at p. 101). Faced with this opposition, the applicant expressly
abandoned its application (Opposition Proceeding No. 91222401). (Id. at ¶¶30-34 and Exhibit 7, pp. 426-
14
435). In 2015, Homes for Heroes filed a Notice of Opposition against the mark FINANCING FOR
HEROES for “marketing consulting; marketing services” based on priority and likelihood of confusion
with the HOMES FOR HEROES Marks, which was sustained by the Board and also resulted in
abandonment of the application (Opposition Proceeding No. 81220905). (35 T.T.A.B.VUE Exhibit 8, pp.
437-442).
Additionally, the following applications to register marks that include FOR HEROES were
abandoned by the applicant after Homes for Heroes asserted its rights or the applicant failed to respond to
an Office Action citing Opposer’s prior filings, LENDING FOR HEROES, MORTGAGES FOR
HEROES, INSURANCE FOR HEROES, HOUSING FOR HEROES, REAL ESTATE 4 HEROES, and
BUILDING FOR HEROES. (Id. at ¶¶30-34).
In addition to filings with the USPTO, Opposer monitors third party filings in state records, such
as secretaries of state, that claim rights in marks similar to HOMES FOR HEROES, as well as actual use
in the marketplace, and has sent cease and desist letters to enforce its rights in the HOMES FOR
HEROES marks. (Id. at ¶10, Exhibit 14 (Opposer’s cease and desist letters)). For example, when
Opposer discovered that a third party registered the mark HOMES & LOANS FOR HEROES with the
South Dakota Secretary of State, Opposer sent a cease and desist letter to the registrant advising it of
Opposer’s prior rights and federal registrations in the HOMES FOR HEROES Marks and demanding that
the registrant cease all use of the infringing mark. (Id.) (“use and registration of the HOMES & LOANS
FOR HEROES mark is a clear infringement of Homes for Heroes’ marks. It creates a high likelihood of
confusion for consumers and the public, and it shows intent to improperly trade on the goodwill of Homes
for Heroes.”). Opposer also sent a cease and desist letter to a company that advertised an organization
called “Lubbock Homes for Heroes.” (Id. at p. 635) (“Homes for Heroes’ mission is to help local heroes
find and afford housing in communities around the country. Though your organization appears to have a
similar mission – and Homes for Heroes does not wish to hinder your work – Homes for Heroes must
demand that you cease any further us of the term “Homes for Heroes” in any marketing, advertising,
promotion, or identification materials.”).
15
Homes for Heroes has also filed federal lawsuits to protect its marks, including a 2011
infringement lawsuit that challenged the defendant’s use of BUILDING HOMES FOR HEROES and a
2016 infringement lawsuit that challenged the defendant’s use of HOMES FOR OUR HEROES. (Id. at
¶34). Both lawsuits resulted in settlement. (Id.).
B. APPLICANT AND ITS DEALS 4 HEROES MARK
On February 25, 2016, Applicant Deals 4 Heroes, LLC (“Applicant” or “Deals 4 Heroes”) filed
an application seeking registration of DEALS 4 HEROES for the following services in Class 35:
Advertising and directory services, namely, promoting the services of others by providing a web page featuring links to the websites of others; Providing business information via a website; Providing a website featuring on-line classified advertisements; Providing a web site featuring the ratings, reviews and recommendations on employers and employees and places of employment for use by employees, employers, business owners, and consumers; Providing business information via a website; Providing on-line web directory services featuring hyperlinks to the websites of others; Providing on-line web directory services featuring hyperlinks to the websites of businesses or service providers who do business with first responders, police, firemen, veterans, teachers, nurses, and active-duty military, and employees of other governmental or non-profit entities.
(“DEALS FOR HEROES Mark”).
Applicant intends to offer “on-line web directory services featuring hyperlinks to the websites of
businesses or service providers who do business with first responders, police, fireman, veterans, teachers,
nurses, and active-duty military, and employees of other governmental or non-profit entities.” (35
T.T.A.B.VUE ¶29).
C. THE USPTO’S TREATMENT OF FOR HEROES MARKS
Homes for Heroes has also identified various applications in which the USPTO required third
party applicants to disclaim exclusive rights in non-distinctive terms preceding FOR HEROES in the
claimed marks in Classes 35 and 36, including but not limited to, DEALS in the mark DEALS FOR
HEROES for advertising and directory services, FINANCING in the mark FINANCING FOR HEROES
for marketing services, LENDING in the mark LENDING FOR HEROES for lending and loan services,
MORTGAGES in the mark MORTGAGES FOR HEROES for financial services, INSURANCE in the
16
mark INSURANCE FOR HEROES for health insurance services and business administration of health
care insurance, HOUSING in the mark HOUSING FOR HEROES for real estate agency and temporary
housing arrangement services, and REAL ESTATE in the mark REAL ESTATE 4 HEROES for real
estate agency services. (Id. at ¶31).
V. ARGUMENT
The Lanham Act prohibits the registration of marks that resemble a mark registered or previously
used in the United States by another that is likely, when used in connection with the services of the
applicant, to cause confusion, or to cause mistake, or to deceive. 15 U.S.C. § 1052(d). Based upon the
facts set forth above, it is clear that confusion, mistake, or deception would be likely, and that Opposer
would be damaged, if registration of Applicant’s DEALS 4 HEROES Mark is permitted in connection
with the services identified in the application at issue herein. Therefore, Opposer respectfully submits that
Opposition Nos. 91235046 be sustained and that registration of the DEALS 4 HEROES Mark be rejected.
A. OPPOSER HAS STANDING AND PRIORITY OF USE
Opposer has standing to oppose the application to register the DEALS 4 HEROES Mark.
Opposer’s priority of use is also not in dispute. Opposer’s registrations include first use in commerce
dates from 2011 or before, and Applicant’s Application is based on an intent-to-use. For standing, an
opposer must show a “real interest” in the proceeding, and a “reasonable basis” for its belief that it would
suffer damage if the mark at issue were registered. Ritchie v. Simpson, 50 U.S.P.Q.2d 1023, 1025 (Fed.
Cir. 1999). An opposer can show its “real interest” and “reasonable basis” by properly making pleaded
registrations of record. Lipton Indus., Inc. v. Ralston Purina Co., 213 U.S.P.Q.2d 185, 213 (C.C.P.A.
1982). Here, Opposer has prior rights in the HOMES FOR HEROES Marks and has plead registrations
that are of record. (35 T.T.A.B.VUE ¶¶ 3-9, Exhibits 1-4.).
B. REGISTRATION OF APPLICANT’S SIMILAR MARK FOR SERVICES NEARLY IDENTICAL TO OPPOSER’S IS LIKELY TO CAUSE CONFUSION
Applicant’s proposed use of the DEALS 4 HEROES Mark in connection with nearly identical
online directory services targeted to the same consumers is likely to cause confusion as to the source of
17
such services. 15 U.S.C. § 1052(d). Whether a likelihood of confusion exists is a question of law,
determined on a case-specific basis, applying the relevant factors set out in In re E. I. du Pont de Nemours
& Co., 177 U.S.P.Q. 563, 567 (C.C.P.A. 1973). Those factors are as follows:
1. The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression.
2. The similarity or dissimilarity and nature of the goods or services as described in an application or registration or in connection with which a prior mark is in use.
3. The similarity or dissimilarity of established, likely-to-continue trade channels.
4. The conditions under which and buyers to whom sales are made, i. e. “impulse” vs. careful, sophisticated purchasing.
5. The fame of the prior mark (sales, advertising, length of use).
6. The number and nature of similar marks in use on similar goods.
7. The nature and extent of any actual confusion.
8. The length of time during and conditions under which there has been concurrent use without evidence of actual confusion.
9. The variety of goods on which a mark is or is not used (house mark, “family” mark, product mark).
10. The market interface between applicant and the owner of a prior mark.
11. The extent to which applicant has a right to exclude others from use of its mark on its goods.
12. The extent of potential confusion, i.e., whether de minimis or substantial.
13. Any other established fact probative of the effect of use.
In re E. I. du Pont de Nemours & Co., 177 U.S.P.Q. 563 at 567. Examination of each of the DuPont
factors is not necessary to determine likelihood of confusion and different factors may play a dominant
role in determining likelihood of confusion depending on the evidence of each case. Bose Corp. v. QSC
Audio Products, Inc., 63 U.S.P.Q.2d 1303, 1305 (Fed. Cir. 2002) (citing Kenner Parker Toys, Inc. v. Rose
Art Indus., Inc., 22 U.S.P.Q.2d 1453, 1456 (Fed. Cir. 1992)).
In the present case, the following factors are relevant to determining whether there is a likelihood
of confusion: (1) the similarity of the services; (2) the similarity of the marks in their entireties as to
appearance, sound, connotation and commercial impression; (3) the distinctiveness of Opposer’s mark;
(4) the number of other similar marks coexisting; (5) the similarity of the trade channels and target
markets; and (6) the conditions under which the goods are sold and the level of care with which the
18
services are purchased. As set forth below, each of the relevant factors weigh in favor of a finding of
likelihood of confusion.
1. The Parties’ Services Are Identical or Nearly Identical
Applicant’s applied-for services are nearly identical to Opposer’s services of the same class.
“The authority is legion that the question of registrability of an applicant’s mark must be decided on the
basis of the identification of goods set forth in the application regardless of what the record may reveal as
to the particular nature of an applicant’s goods, the particular channels of trade or the class of purchasers
to which sales of the goods are directed.” See Octocom Sys., Inc. v. Houston Computer Servs., Inc., 16
U.S.P.Q.2d 1783, 1787 (Fed. Cir. 1990). “[I]n the context of likelihood of confusion, it is sufficient if
likelihood of confusion is found with respect to use of the mark on any item that comes within the
description of goods in the application or registration.” Apple Computer v.TVNET.Net, Inc., 90
U.S.P.Q.2d 1393, 1398 (T.T.A.B. 2007) (emphasis added) (citing Tuxedo Monopoly, Inc. v. General Mills
Fun Group, 209 U.S.P.Q. 986, 988 (C.C.P.A. 1981) (finding that if likelihood of confusion exists for any
item in the identified goods in that class, that means likelihood of confusion must be found as to the entire
class of an application)). "[E]ven if the goods in question are different from, and thus not related to, one
another in kind, the same goods can be related in the mind of the consuming public as to the origin of the
goods. It is this sense of relatedness that matters in the likelihood of confusion analysis.").
In Apple Computer v. TVNET.NET, Inc., Apple opposed the application to register
VTUNES.NET for digital music video downloads based on its registration for ITUNES for computer
software for use in authorizing, downloading, etc. audio data and ITUNES MUSIC STORE for “a wide
range of services including the following: “retail store services in the field of entertainment, namely,
musical and audiovisual works and related merchandise, provided via the internet and other computer and
electronic communication networks” in International Class 35”. See 90 U.S.P.Q.2d at 1393. The Board
in that case granted summary judgment in favor of Apple finding there was no genuine issue of material
fact as to whether the goods/services were similar noting that they must only be related in some manner
and “digital music video internet downloads are related to, encompassed within or identical to opposer's
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computer software used in connection with audio data, opposer's online downloadable software used in
connection with audio and video data, opposer's online retail store services in the field of musical and
audiovisual works, opposer's telecommunication services that provide audio and video files, and opposer's
services of providing on-line facilities with respect to audio and video content”. Id.
The services are even closer in the present case. Opposer’s registration for HOMES FOR
HEROES, U.S. Reg. No. 4,399,086, covers broad business administration, advertising, and website
information services in Class 35. Specifically, the HOMES FOR HEROES mark is registered in
connection with the following services for military members and veterans, peace officers, firefighters, and
emergency medical technicians, and other community Heroes (each service in each of the parties’ filings
are included below but reordered and emphasized for purposes of comparison):
Opposer’s Identification of Services Applicant’s Identification of Services
Providing a website permitting users to locate businesses and organizations providing saving to military members and veterans, peace officers, firefighters, emergency medical technicians, and other community heroes and links to the websites
of such participating businesses and
organizations
Providing on-line web directory services featuring hyperlinks to the websites of businesses
or service providers who do business with first responders, police, fireman, veterans, teachers, nurses, and active-duty military, and employees of other governmental or non-profit entities
Providing a website which features advertisements for businesses and organizations providing savings to military […]
Providing a website featuring on-line classified advertisements Providing business information via a website
Providing a website permitting prospective offerors of savings to military […] to join the discount program;
Providing a web site featuring the ratings, reviews and recommendations on employers and employees and places of employment for use by employees, employers, business owners, and consumers
Advertising and marketing of a discount program for enabling participants to obtain discounts and goods and services through businesses and organizations offering savings to military […]
Advertising and directory services, namely promoting services of others by providing a web page featuring links to the websites of other
Administration of a discount program for enabling participants to obtain discounts on goods and services through businesses and organizations offering savings to military […]
Providing on-line web directory services featuring hyperlinks to the website of others
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Applicant’s online directory services, and related advertising and business information services
are nearly identical to Opposer’s website discount program, and related advertising and administration
services. The fact that both identifications include specific language that the websites/webpages provide
links to websites of other businesses highlights the identical nature of the respective parties’ services.
Further, Opposer renders its website services, and related advertising, marketing, and
administration services in close connection with its mortgage and title brokerage, real estate, and lending
services that are the subject of U.S. Registrations Nos. 2,904,909, 4,379,639, and 4,379,642. All of these
services are rendered and promoted closely together under the same HOMES FOR HEROES Marks.
This factor weighs heavily in favor or Opposer and strongly impacts the remainder of the
likelihood of confusion analysis as outlined below.
2. The Distinctive Elements of The Marks Are Identical
The distinctive element of Applicant’s DEALS 4 HEROES Mark is fully incorporated in
Opposer’s HOMES FOR HEROES Marks, and consumers will identify that element exclusively with
Opposer when used in connection with website directory or real estate services. As a preliminary matter,
since the parties’ services overlap, a lesser degree of similarity between the marks is required to support a
conclusion of likelihood of confusion. In re SL&E Training Stable, Inc., 88 U.S.P.Q.2d 1216 (T.T.A.B.
2008) (“When the goods are identical in part or otherwise closely related, the degree of similarity
necessary to find likelihood of confusion need not be as great as where there is a recognizable disparity
between the goods.”); Bridgestone Americas Tire Operations, LLC v. Federal Corp., 102 U.S.P.Q.2d
1061, 1064 (Fed. Cir. 2012) (“When the goods are identical, the appearance of a mark of similar sound,
appearance, or connotation [TURANZA and POTENZA vs. MILANZA for tires] is more likely to cause
confusion than if the goods are significantly different.”); Zheng Cai v. Diamond Hong, Inc., 127
U.S.P.Q.2d 1797 (Fed. Cir. 2018), cert. denied, 139 S. Ct. 1550, 203 L. Ed. 2d 713 (2019) (TAI CHI
found to be similar to registrant's WU DANG TAI CHI GREEN TEA in relation to tea).
The similarity of the marks is determined by analyzing “the marks in their entireties as to
appearance, sound, connotation, and commercial impression.” Stone Lion Capital Partners, L.P. v. Lion
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Capital LLP, 110 U.S.P.Q. 1157 (Fed. Cir. 2014) (quoting Dupont, 177 U.S.P.Q. at 567). Where marks,
viewed in their entireties, reveal an identical structure and conjure a similar impression, it goes a long
way toward causing confusion among consumers. See In re Detroit Athletic Co., 128 U.S.P.Q.2d 1047,
1049 (Fed. Cir. 2018); Van Pelt & Brown, Inc. v. John Wyeth & Bro., Inc., 42 C.C.P.A. 1033, 1038
(C.C.P.A. 1947) (finding similarity where both marks “have the same number of syllables, the suffix of
each is pronounced the same, when spoken both have the same cadence and have a very little
distinguishable difference in sound”). Further, “[e]xact identity is not necessary to generate confusion as
to source of similarly-marked products.” Bridgestone Americas Tire Operations, LLC, 102 U.S.P.Q.2d at
1064. The ultimate question is not whether consumers will confuse the marks themselves but whether the
marks will lead consumers to believe the services offered in connection with the marks have a common
source or that the junior user is somehow associated with or endorsed by the owner of the senior mark. In
re West Point-Pepperell, Inc., 175 U.S.P.Q. 558, 558 (C.C.P.A.1972). Applicant, as the newcomer, has
failed to meet its heavy burden of avoiding consumer confusion as to its services and their source. See
Bridgestone Americas Tire Operations, LLC, 673 F.3d at 1337.
DEALS 4 HEROES should be treated as if it were DEALS FOR HEROES for purposes of
comparison. See In re St. Helena Hosp., 113 U.S.P.Q.2d 1082, 1084 (Fed. Cir. 2014) (finding TAKETEN
and TAKE 10! similar where the Board found any differences between the word “ten” and the numeral
“10” as minimal). The USPTO recognized such treatment in refusing REAL ESTATE 4 HEROES based
on Opposer’s prior rights. (35 T.T.A.B.VUE p. 564) (“Although the applicant represents the word ‘for’
with the number “4”, it is the phonetic equivalent of the word form used in the registrant’s marks and has
the same meaning in the context of the marks.”).
DEALS 4 HEROES and HOMES FOR HEROES are visually similar due to the distinctive look
of the FOR HEROES element in both marks. It is of no consequence that the marks are not visually
identical especially given the fact that the only terms that arguably distinguish the marks are descriptive
or less prominent. See In re Chatam Int'l Inc., 71 U.S.P.Q.2d 1944, 1946 (Fed. Cir. 2004) (noting the
Board had good reason to discount ALE, JOSE and GOLD from the parties’ JOSE GASPAR GOLD and
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GASPAR’S ALE marks when analyzing similarity); Fossil Inc. v. The Fossil Group, 49 U.S.P.Q.2d 1451,
1456 (“[a]lthough one could argue that there are only limited similarities between opposer’s one word
mark FOSSIL and applicant’s five word and design mark, namely, FOSSILSCAPES THE FOSSIL
GROUP STONESCAPES and design, the foregoing approach ignores the fact that the most prominent
wording of applicant’s mark is THE FOSSIL GROUP”).
Both DEALS 4 HEROES and HOMES FOR HEROES consist of three words, both marks have
four syllables, and both marks have the same format, namely a single syllable pluralized 4-letter
descriptive/generic term that relates to the benefit offered followed by the virtually identical terms 4
HEROES/FOR HEROES. Further, FOR HEROES is the visually dominant and most distinctive element
of both marks. The eye of the U.S. consumer will first be drawn to the word HEROES because it is the
longest and most distinctive term used in a parallel position in each mark and because of the venerable
and emotion-filled meaning that term incites in U.S. consumers. Only after contemplating HEROES, will
consumers consider the descriptive portion–DEALS–of Applicant’s DEALS 4 HEROES Mark. Further,
just as the eye of the U.S. consumer will likely fall first upon HEROES or HEROES, so too will the ear.
This strong similarity paired with the similar aural and commercial impression created by both marks is
sure to create a likelihood of confusion in the marketplace.
The commercial impressions created by the parties’ respective marks are similar because both
marks convey benefits bestowed upon veterans, first responders, or other Heroes. The impression created
by the marks in a likelihood of confusion analysis need not be identical.
In the In re Chatham case, the Federal Circuit found that although “undoubtedly, JOSE GASPAR
GOLD and GASPAR’S ALE are not identical”, the Board was correct in finding that “both marks convey
the commercial impression that a name, GASPAR, is the source of related alcoholic beverages, tequila
and beer or ale”, discount[ing] the commercial significance of ALE in the registered mark and JOSE and
GOLD in Chatham’s mark” where ALE was generic of the goods and disclaimed in the registration and
JOSE simply reinforced that impression that GASPAR was an individual’s name and GOLD described
the premium quality of the offering. In re Chatham, Intern. Inc. 71 U.S.P.Q.2d at 1946.
23
In the present case, where the marks are even closer, the result is the same. Both marks convey
the commercial impression that Heroes are the recipients of nearly identical discount directory and
information services and the generic/descriptive portions of both marks, DEALS and HOMES should be
discounted.
In Morton-Norwich Prod. Inc. v. S.C. Johnson & Son, Inc., the opposer-appellee’s fabric softener
was widely promoted with advertisements and labels that included its mark RAIN BARREL as well as
the phrase “rainwater soft, rainwater fresh” used to emphasize the softness and freshness of its product.
Id. Such use created the connotation of “rain-softness and rain-freshness” in the RAIN BARREL mark
and the board found that this was similar to the commercial impression created by the applicant-
appellant’s RAINFRESH mark. Se Morton-Norwich Prod. Inc. v. S.C. Johnson & Son, Inc., 189
U.S.P.Q. 413, 415 (C.C.P.A. 1976).
Here, Opposer’s deals are promoted nation-wide both through its online directory that promotes
deals offered by companies such as Target, Under Armour and Carhartt and via its real estate affiliates
numbering over 2,500 in all fifty states in connection with the HOMES FOR HEROES Marks. (35
T.T.A.B.VUE at 4; 7; 322-23). Savings provided in connection with Opposer’s HOMES FOR HEROES
services as of the date of this action are over $40,000,000. (Id .at 4). Opposer uses its HOMES FOR
HEROES Marks along with the phrase “Local Business Deals” and uses “deals” in its webpage address at
www.homesforheroes.com/deals/. (Id. at 312 and 324). The evidence of record clearly shows Opposer
uses its HOMES FOR HEROES mark in connection with business discount and information services that
are offered and promoted hand in hand with Opposers real estate brokerage and mortgage services, and
that consumers will understand Opposer’s services as including both provision of homes to Heroes and
general deals to Heroes.
The USPTO has recognized that FOR HEROES/4 HEROES should be considered the distinctive
element of a mark when the only other element describes the services. In refusing the application to
register REAL ESTATE 4 HEROES, the USPTO found that “[e]ach mark also includes wording that is
descriptive in the context of the applicant’s and registrant’s services; i.e. HOME/ REAL ESTATE.
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Matter that is descriptive of or generic for a party’s goods and/or services is typically less significant or
less dominant in relation to other wording in a mark.” (35 T.T.A.B.VUE Exhibit 13, p. 564). Here, the
distinctive portion of DEALS 4 HEROES and HOMES FOR HEROES is 4 HEROES/FOR HEROES,
terms that are identical or nearly identical.
Given the above, Applicant’s mark is similar to Opposer’s mark, especially given the nearly
identical nature of the services in the respective filings.
3. HOMES FOR HEROES Is A Strong and Distinctive Mark
HOMES FOR HEROES is a distinctive mark as evidenced by the incontestable status of each of
its registrations, and its success in boxing out third parties from using marks that include FOR HEROES
in connection with Opposer’s core real estate and deal directory services, both through its own
enforcement actions and via the USPTO’s refusal of such applications. The HOMES FOR HEROES
Marks are both conceptually and commercially strong as the marks are suggestive of the discount
program administration, advertising, and website services, and Opposer has acquired distinctiveness and
nationwide marketplace recognition through its hard work and success in marketing, promoting and
offering deals for Heroes, including through over 2,500 affiliates in all 50 states. (35 T.T.A.B.VUE ¶¶12-
15). The degree of distinctiveness can be determined only by considering the mark in relation to the
specific goods or services. Remington Products, Inc. v. N. Am. Philips Corp., 13 U.S.P.Q.2d 1444, 1448
(Fed. Cir. 1990). Where a mark does not immediately identify the nature of the services being offered but
requires some step of the imagination, it is suggestive and not descriptive. See In re George Weston Ltd.,
228 U.S.P.Q. 57, 58 (T.T.A.B. 1985) (SPEEDI BAKE for frozen dough found as suggestive).
On its face, the HOMES FOR HEROES Marks are suggestive of Opposer’s services because the
marks do not immediately identify the nature of Opposer’s services. Identifying and understanding that
the HOMES FOR HEROES Marks are used in connection with the administration of a discount program
for local businesses, providing a website featuring advertisements for savings with local businesses,
mortgage and title brokerage, real estate and lending services, and related advertising, marketing, and
administration services, requires some step of the consumer imagination.
25
The strength and renown of Opposer’s HOMES FOR HEROES Marks is clearly evidenced by the
$40,000,000 in savings provided in connection with its services over the past two decades and its broader
deals offered via its online directory nationwide for more than half that time. Homes for Heroes has
conducted expansive campaigns across the country in connection with the HOMES FOR HEROES
Marks, including via thousands of local affiliates in all fifty states. As noted on its website for at least the
past ten years, Homes for Heroes holds itself out as the “The Nation’s Largest Hero Savings Program.”
(35 T.T.A.B.VUE Exhibit 6, p. 406). Further, Homes for Heroes’ affiliates use the HOMES FOR
HEROES Marks to promote the discount services in all fifty states. (Id. at p. 413). For instance, Emerald
Real Estate Group in Washington State proudly promotes its savings offered through the HOMES FOR
HEROES program, noting the group saved local Heroes over $140,000 in 2017, $130,000 in 2018 and
$41,000 to national Heroes from January 2019 through the date of Opposer’s testimony period. (35
T.T.A.B.VUE Exhibit 15, p. 645). Affiliates often note Opposer’s sterling reputation, including an
affiliate in Colorado whose website prominently uses the HOMES FOR HEROES Marks along with the
following recognitions:
26
and an affiliate in Texas whose website includes reviews, one of which says:
(Id. at pp. 649 and 654).
Real estate affiliates also promote the broader deals available to Heroes. (Id. at p. 647)
(“participating vendors will offer discounts on various other services such as moving, storage, pest, lawn
care, plumbing, electrical, cleaning and remolding to name a few”). The HOMES FOR HEROES deals
include numerous large and small businesses, including Target, Allstate Insurance, Farmer’s Insurance,
Under Armour, Columbia, and 1-800-Flowers.com. (35 T.T.A.B.VUE at 4; 7; 322-23). Opposer does not
include each and every deal offered within its brief but numerous deals can be seen in Exhibit 6. (35
T.T.A.B.VUE Exhibit 6).
Over the past 15 years, if not before, Opposer’s services have also been promoted via local news
27
outlets, including in Lee County, Florida, Aberdeen, South Dakota, Chelsea, Alabama, Fresno, California,
Mishawaka, Indiana, and Stafford, Texas, and national networks, including NBC, ABC News, Fox News,
etc. (Id. at 4, 287-308, and 412). Third parties such as the American Red Cross have recognized Homes
for Heroes with awards for the services provided to Heroes. (Id. at p. 409) (“2010 Social Entrepreneur
Award Winner”).
The USPTO has recognized the strength of Opposer’ HOMES FOR HEROES Marks and
Opposer’s exclusive rights to FOR HEROES in connection with similar services. For instance, the
USPTO refused the application to register HOUSING FOR HEROES in October 2016 based on a
likelihood of confusion with Opposer’s prior registrations U.S. Ser. Nos. 2,904,909, 4,379,639, and
4,379,642. (35 T.T.A.B.VUE p. 473). In the refusal, the USPTO found the marks were similar where
they both use “similar or identical terms and indicate that the services are for providing places to live for
HEROES” and that “[t]he good and/or services of the parties need not be identical or even competitive to
find a likelihood of confusion” where the services were real estate agency services and arranging
temporary housing accommodations on the one hand, and mortgage and title brokerage, real estate
brokerage, and mortgage lending services on the other. Id.
Here, the analysis is similar except the marks and services factors are reversed. With the
HOUSING FOR HEROES analysis, the marks were nearly identical and the services were very closely
related where Applicant’s services are nearly identical to Opposer’s and the marks are very closely
related. The result is the same.
Similarly, the USPTO refused the application to register REAL ESTATE 4 HEROES due to the
highly similar marks and highly related services. (35 T.T.A.B.VUE Exhibit 13, p. 564-65). The
USPTO’s treatment of REAL ESTATE 4 HEROES illustrates that marks may be found similar even
where they start with visually and aurally distinguishable elements if those elements are descriptive
and/or create similar (albeit not identical) commercial impressions. Just as the more specific term,
HOMES could be considered part of the broader category of REAL ESTATE and, therefore similar, so
too is HOMES part of the broader category of DEALS offered by both parties. Further, the parties’
28
services at issue are equally if not more similar in the present case.
Opposer owns a valid and incontestable registration on the Principal Register for the HOMES
FOR HEROES mark, which is distinctive in connection with its services and promotes those services
under the mark nationally, resulting in acquired distinctiveness for the mark as evidenced by the USPTO.
This factor supports a finding of likelihood of confusion.
4. There Are No Other Registrations That Include FOR HEROES for Similar
Website Directory, or Related Advertising and Business Information
Services
No other registrations exist on the USPTO Register for marks that include FOR HEROES for
website directory services, or even related advertising and business administration services. The mere
fact that third party registrations or common law use exists is insufficient to show a mark is weak where
the services are unrelated. See Stratus Networks, Inc. v. UBTA-UBET Commc'ns Inc., 2020 U.S.P.Q. 2d
10341 (Fed. Cir. 2020) (finding applicant’s evidence of five third party registrations and five screenshots
of third party websites unpersuasive as a “majority of third-party use was unrelated to the relevant
industry” and the marks were distinguishable).
The only active filing that Applicant can point to that includes FOR HEROES or 4 HEROES for
Class 35 services, is the registration for the mark CAREERS FOR HEROES for inter alia “providing
online personnel recruitment, personnel management information and job research information services.”
(44 T.T.A.B.VUE p. 3). Regardless, third party registrations are unpersuasive. See Stratus Networks,
Inc., 2020 U.S.P.Q.2d at 103451; AMF Inc. v. American Leisure Prods., Inc. , 177 U.S.P.Q. 268, 269
(C.C.P.A. 1973) (“existence of [third party] registrations is not evidence of what happens in the market
place or that customers are familiar with them.”); Olde Tyme Foods, Inc. v. Roundy’s, Inc., 22 U.S.P.Q.2d
1542, 1545 (Fed. Cir. 1992) (“As to strength of a mark, however, registration evidence may not be given
any weight.”) (emphasis in original). And even if third party registrations were considered persuasive –
which they are not – Homes for Heroes categories of services do not include job research, personnel
management, or similar services, and therefore the mark is likely to be confused with Homes for Heroes.
All of the other filings of record are irrelevant as they are distinguishable from Opposer’s registered
29
services.
This lack of similar parties coexisting in the relevant fields is no accident or coincidence. To the
contrary, Opposer has consistently enforced its rights in the HOMES FOR HEROES Marks against
parties using similar marks for related goods and services, including “advertising and directory services”
and “marketing services” in Class 35. Below is a non-exhaustive list of proposed third party marks that
have been abandoned as a result of on Opposer’s enforcement efforts.
DEALS FOR HEROES for “Advertising and directory services, namely, promoting the services of others by providing a web page featuring links to the websites of others” in Class 35. (35 T.T.A.B.VUE ¶ 31(a); Id. at 435 (notice of express abandonment)).
FINANCING FOR HEROES for “Marketing consulting; Marketing services” in Class 35. (35 T.T.A.B.VUE ¶ 31(b); p. 442).
INSURANCE FOR HEROES for “Providing health insurance exchanges in the nature of a marketplace that offers a variety of plans from different insurance providers to members of the emergency services community, hospital and health care workers, educators and the military; Business administration of health care insurance exchange programs; management of health care insurance exchange programs of others ; compiling of health care insurance exchange market information for business purposes; providing health care insurance exchange information via the internet; promoting public awareness through the distribution of information and resources of the need for promoting to achieve the advance of healthcare insurance exchange programs in the field of healthcare” in Class 35. (35 T.T.A.B.VUE 468).
REAL ESTATE 4 HEROES for “Real estate agency services” in Class 36. (35 T.T.A.B.VUE ¶31(g); p. 559).
MORTGAGES FOR HEROES for “Financial services, namely, offering members of the emergency services community, hospital and health care workers, educators and of the military origination, acquisition, servicing, securitization and brokerage of mortgage loans featuring discounted mortgage fees and low interest rates” in Class 36. (35 T.T.A.B.VUE ¶31(d); p. 458).
LENDING FOR HEROES for “Financial services, namely, mortgage banking services, namely, origination, acquisition, servicing, securitization and brokerage of mortgage loans lending to members of the emergency services community, hospital and health care workers, educators and the military; loan services, financing of loans, installment loans, vehicle title loans, money lending to members of the emergency services community, hospital and health care workers, educators and the military” in Class 36. (35 T.T.A.B.VUE ¶31(c); p. 449).
BUILDING HOMES FOR HEROES for “Charitable services, namely, providing assistance to wounded or disabled veterans and their families of the United States armed services in the form of financial help for such veterans and their families” in
30
Class 36 and “Charitable services, namely, providing assistance to wounded or disabled veterans and their families of the United States armed services in the form of financial help for such veterans and their families” in class 37. (35 T.T.A.B.VUE ¶34).
When Opposer identifies an application to register a mark as confusingly similar to HOMES
FOR HEROES because it is used in connection with real estate or financial services, or services related
to directories for deals and discounts for Heroes, whether it be administration, advertisement, or
information services, it takes appropriate enforcement actions. Opposer’s present opposition of the
DEALS 4 HEREOS Mark is in line with its past enforcement strategy.
Similarly, every example of common law third party use of marks that include FOR HEROES
cited by Applicant is distinguishable as outlined below. 2 AMF Inc. v. Am. Leisure Prod., Inc., 177
U.S.P.Q. 268 (“We think the listing of trademarks for boats in various trade magazines should be treated
in a similar manner as are third party registrations. They give no indication as to actual sales, when the
mark was adopted, customer familiarity with the marks, etc. Their evidentiary scope and effect is merely
to show promotion of the listed item in the particular issue of the trade publication where the listing
appeared”).
Hotels for Heroes – Hotel rooms for families of wounded, injured or ill military service
members. (38 T.T.A.B.VUE Exhibit 1).
Racing for Heroes – Motorsport, health, wellness, and employment opportunities for
veterans. (38 T.T.A.B.VUE Exhibit 3)
Companions for Heroes – Services related to service dogs. (38 T.T.A.B.VUE Exhibit
5).
Pickleball for Heroes – Pickleball tournament event. (38 T.T.A.B.VUE Exhibit 7).
Wills for Heroes – Free legal documents. (38 T.T.A.B.VUE Exhibit 8).
Hunts for Heroes – Hunting tag service transfer program. (38 T.T.A.B.VUE Exhibit 9).
Nantucket Holidays for Heroes – Gala. (38 T.T.A.B.VUE Exhibit 10).
Haven for Heroes - Substance and alcohol abuse recovery support. (38 T.T.A.B.VUE
Exhibit 11).
2 Applicant also includes common law references Help for Heroes and Here for Heroes but the screen-shots provided do not identify the goods or services offered in connection with those marks so they are irrelevant to this discussion.
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Stand Up for Heroes – Stand up comedy event. (38 T.T.A.B.VUE Exhibit 12)
Hounds for Heroes – Services related to service dogs (38 T.T.A.B.VUE Exhibit 14).
PXG for Heroes - Golf-related goods and services. (38 T.T.A.B.VUE Exhibit 15).
None of the above uses include offering directory services or related advertising services.
Therefore, they fail to support coexistence of Applicant’s mark with Opposer’s registrations. See Stratus
Networks, Inc., 955 F.3d at 997.
Because of Opposer’s diligent policing, an obligation assumed by any trademark right holder, the
field of FOR HEROES marks for the services applied-for by Applicant and covered in Opposer’s
registration in Class 35 is not a crowded one. This factor weighs in favor of a finding that a likelihood of
confusion exists.
5. The Trade Channels and Conditions of Sale Are The Same
Opposer and Applicant’s trade channels are identical. The relevant inquiry in determining
whether the trade channels are similar is to consider whether the services recited in the Application
travel in the same channels of trade as the services in Opposer’s prior registrations. Packard Press, Inc.
v. Hewlett-Packard Co., 56 U.S.P.Q.2d 1351, 1357 (Fed. Cir. 2000) (“When the registration does not
contain limitations describing a particular channel of trade or class of customer, the goods or services
are assumed to travel in all normal channels of trade.”). Because Applicant does not limit or specify the
trade channels in its identification of services, it is presumed that Applicant’s applied-for services are
offered to all types of consumers without limitation. See Id. If Opposer’s services actually offered are
considered, the similarity is even stronger as its online directory at www.homesforheroes.com/deals is
identical to what Applicant proposes in its application. Accordingly, the channels of trade should be
considered the same and this factor weighs in favor of finding a likelihood of confusion.
Further, because the parties’ services are legally identical, the conditions of sale and the
consumers of the respective services are presumed the same. Stone Lion Capital Partners, L.P. v. Lion
Capital LLP, 110 U.S.P.Q. 1157, 1159 (Fed. Cir. 2014). Applicant’s website directory services, and
related advertising, and business information services are legally identical to Opposer’s website and
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advertising and marketing services, meaning the channels of trade and classes of purchasers are
considered as the same. The conditions of sale for both Opposer’s and Applicant’s services are presumed
the same. Both of these factors weigh in Opposer’s favor in the likelihood of confusion analysis.
6. The Relevant Consumers Exercise a Relatively Low Level of Care
The relevant consumers will not take extra care in purchasing services related to discount
offerings promoted by Applicant or Opposer. “When products are relatively low-priced and subject to
impulse buying, the risk of likelihood of confusion is increased because purchasers of such products are
held to a lesser standard of purchasing care.” Recot, Inc. v. Becton, 54 U.S.P.Q.2d 1894, 1899 (Fed. Cir.
2000). This includes discount services. See Am. Airlines v. United Serv. Ass’n for Healthcare, 1997
T.T.A.B. LEXIS 284, *20 (T.T.A.B. May 15, 1997) (finding applicant’s use of BENEFITS
ADVANTAGE for “arranging group discounts on airfare, hotels and motels” is likely to cause confusion
with respect to the travel discount and other services provided by opposer under its various AAdvantage
marks because inter alia the lack of sophistication of consumers). Further, where the class of buyers may
be mixed, the relevant standard of care is that of the least sophisticated consumer. Stone Lion Capital
Partners, L.P. v. Lion Capital LLP, 110 U.S.P.Q. 1157 (Fed. Cir. 2014)
It is well-settled that even sophisticated purchasers are not immune from confusion as to source,
especially where the services are identical and the marks are similar. See In re Research Trading Corp.,
230 U.S.P.Q. 49, 50 (Fed. Cir. 1986) (“Human memories even of discriminating purchasers ... are not
infallible.”) (quoting Carlisle Chem. Works, Inc. v. Hardman & Holden Ltd., 434 F.2d 1403, 1406, 168
U.S.P.Q. 110, 112 (C.C.P.A. 1970)). This factor supports a likelihood of confusion finding.3 This factor
weighs in favor of Opposer.
7. Doubt Must Be Resolved Against Applicant
There is no doubt as to the likelihood of confusion between the HOMES FOR HEROES Marks
and the DEALS 4 HEROES Mark, but even if there, doubts as to likelihood of confusion must be
3 The remaining duPont factors are either irrelevant or, neutral, or favor Opposer.
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resolved against Applicant, the newcomer. See e.g. San Fernando Elec. Mfg. Co. v. JFD Electronics
Components Corp., 196 U.S.P.Q. 1 (C.C.P.A. 1977) (“It is too well settled as an axiom of trademark law
to require citation of precedent that on the statutory issue involved here doubts are to be resolved against
the newcomer and in favor of the prior user.”); In re Hyper Shoppes (Ohio), Inc., 6 U.S.P.Q.2d 1025
(Fed. Cir. 1988) (“Any doubts about likelihood of confusion, etc., under § 2(d) must be resolved against
applicant as the newcomer.”); TBC Corp. v. Holsa, Inc., 126 F.3d 1470, 1473, 44 U.S.P.Q.2d 1315 (Fed.
Cir. 1997) (Where the applicant has filed an ITU application and has not yet used the mark, the “well
established rule” of resolving doubts against the newcomer applies to sustain the opposition of the
“longtime user.”); Hewlett-Packard Co. v. Packard Press, Inc., 62 U.S.P.Q.2d 1001 (Fed. Cir. 2002)
(“This court resolves doubts about the likelihood of confusion against the newcomer because the
newcomer has the opportunity and obligation to avoid confusion with existing marks.”); In re Mighty
Leaf Tea, 94 U.S.P.Q.2d 1257 (Fed. Cir. 2010) (reasonable doubt is resolved against the newcomer).
When the evidence has been weighed, if the issue of likelihood of confusion is close, which it is
not here, still the application must be refused.
VI. CONCLUSION
In light of the foregoing, Opposer respectfully requests that the Board sustain this opposition
proceeding and refuse registration of the application to register the DEALS 4 HEROES mark.
Respectfully submitted,
Dated: Boston, MA Homes for Heroes, Inc. June 1, 2020
Cynthia J. Walden
Sarah B. Kelleher Postal Address:
P.O. Box 1022 Minneapolis, MN 55440-1022
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Courier Mail Address:
One Marina Park Drive Boston, MA 02210 Telephone: (617) 542-5070 Facsimile: (617) 542-8906 [email protected]; [email protected]; [email protected]
Attorneys for Opposer Homes for Heroes, Inc.
CERTIFICATE OF SERVICE
I hereby certify that a true and complete copy of the foregoing OPPOSER’S BRIEF
has been served on Applicant by forwarding said copy on June 1, 2020, to Mr. Adam Bach via
his e-mail addresses of record, [email protected] and [email protected].
/Sarah B. Kelleher/
