PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`Response to Office Action
`
`Input Field
`
`SERIAL NUMBER
`
`LAW OFFICE ASSIGNED
`
`MARK SECTION
`
`MARK FILE NAME
`
`LITERAL ELEMENT
`
`STANDARD CHARACTERS
`
`USPTO-GENERATED IMAGE
`
`COLOR(S) CLAIMED
`(If applicable)
`
`DESCRIPTION OF THE MARK
`(and Color Location, if applicable)
`
`EVIDENCE SECTION
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)EVIDENCE FILE NAME(S)
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)ORIGINAL PDF FILE
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)CONVERTED PDF FILE(S)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(14 pages)
`
`The table below presents the data as entered.
`
`Entered
`
`86310204
`
`LAW OFFICE 118
`
`http://tsdr.uspto.gov/img/86310204/large
`
`ORION REALTY NYC LLC
`
`NO
`
`NO
`
`Color is not claimed as a feature of the mark.
`
`The mark consists of a design of an archer using a bow with the stylized text "orion
`realty nyc llc" to the right.
`
`evi_701095314-20141024150848106528_._ORION_REALTY__86310204__-
`_OA_Response.pdf
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0002.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0003.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0004.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0005.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0006.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0007.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0008.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0009.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0010.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0011.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0012.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0013.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0014.JPG
`
`\\TICRS\EXPORT16\IMAGEOUT16\863\102\86310204\xml6\ROA0015.JPG
`
`DESCRIPTION OF EVIDENCE FILE
`
`Response to September 30, 2014 Office Action
`
`GOODS AND/OR SERVICES SECTION (current)
`
`INTERNATIONAL CLASS
`
`036
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`DESCRIPTION
`
`Real estate brokerage; Real estate investment services; Real estate investment trust management services; Real estate management
`consultation; Real estate management services; Real estate service, namely, rental property management
`
`FILING BASIS
`
`GOODS AND/OR SERVICES SECTION (proposed)
`
`INTERNATIONAL CLASS
`
`TRACKED TEXT DESCRIPTION
`
`Section 1(b)
`
`036
`
`Real estate brokerage; Real estate investment services; Real estate investment trust management services; Real estate management
`consultation; Real estate management services; Real estate service, namely, rental property management
`
`FINAL(cid:160)DESCRIPTION
`
`Real estate investment services; Real estate investment trust management services; Real estate management consultation; Real estate
`management services; Real estate service, namely, rental property management
`
`FILING BASIS
`
`Section 1(b)
`
`ADDITIONAL STATEMENTS SECTION
`
`DISCLAIMER
`
`DESCRIPTION OF THE MARK
`(and Color Location, if applicable)
`
`SIGNATURE SECTION
`
`RESPONSE SIGNATURE
`
`SIGNATORY'S NAME
`
`SIGNATORY'S POSITION
`
`SIGNATORY'S PHONE NUMBER
`
`DATE SIGNED
`
`AUTHORIZED SIGNATORY
`
`FILING INFORMATION SECTION
`
`SUBMIT DATE
`
`TEAS STAMP
`
`No claim is made to the exclusive right to use REALTY NYC LLC apart from the
`mark as shown.
`
`The mark consists of a design of an archer using a bow with the stylized text "orion
`realty nyc llc" to the right with lines on either side of "llc".
`
`/Seth Willig Chadab/
`
`Seth Willig Chadab
`
`Associate Attorney, DunlapWeaver PLLC, Maryland Bar Member
`
`7037777319
`
`10/24/2014
`
`YES
`
`Fri Oct 24 15:15:02 EDT 2014
`
`USPTO/ROA-XX.XXX.XX.XX-20
`141024151502359812-863102
`04-500aebfb4b4f5671c49f49
`729dc4e84467b75998b325c74
`c86b5c77d5a8da2a44c-N/A-N
`/A-20141024150848106528
`
`PTO Form 1957 (Rev 9/2005)
`
`OMB No. 0651-0050 (Exp. 07/31/2017)
`
`To the Commissioner for Trademarks:
`
`Response to Office Action
`
`Application serial no. 86310204(cid:160)ORION REALTY NYC LLC (Stylized and/or with Design, see http://tsdr.uspto.gov/img/86310204/large) has
`been amended as follows:
`
`EVIDENCE
`
`

`

`Evidence in the nature of Response to September 30, 2014 Office Action has been attached.
`Original PDF file:
`evi_701095314-20141024150848106528_._ORION_REALTY__86310204__-_OA_Response.pdf
`Converted PDF file(s) ( 14 pages)
`Evidence-1
`Evidence-2
`Evidence-3
`Evidence-4
`Evidence-5
`Evidence-6
`Evidence-7
`Evidence-8
`Evidence-9
`Evidence-10
`Evidence-11
`Evidence-12
`Evidence-13
`Evidence-14
`
`CLASSIFICATION AND LISTING OF GOODS/SERVICES
`Applicant proposes to amend the following class of goods/services in the application:
`Current: Class 036 for Real estate brokerage; Real estate investment services; Real estate investment trust management services; Real estate
`management consultation; Real estate management services; Real estate service, namely, rental property management
`Original Filing Basis:
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`Proposed:
`Tracked Text Description: Real estate brokerage; Real estate investment services; Real estate investment trust management services; Real
`estate management consultation; Real estate management services; Real estate service, namely, rental property management
`
`Class 036 for Real estate investment services; Real estate investment trust management services; Real estate management consultation; Real
`estate management services; Real estate service, namely, rental property management
`Filing Basis: Section 1(b), Intent to Use: For a trademark or service mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to use the mark in commerce on or in connection with the identified goods/services in the application. For a
`collective trademark, collective service mark, or collective membership mark application: As of the application filing date, the applicant had a
`bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by members on or in connection with
`the identified goods/services/collective membership organization. For a certification mark application: As of the application filing date, the
`applicant had a bona fide intention, and was entitled, to exercise legitimate control over the use of the mark in commerce by authorized users in
`connection with the identified goods/services, and the applicant will not engage in the production or marketing of the goods/services to which the
`mark is applied, except to advertise or promote recognition of the certification program or of the goods/services that meet the certification
`standards of the applicant.
`
`ADDITIONAL STATEMENTS
`Disclaimer
`No claim is made to the exclusive right to use REALTY NYC LLC apart from the mark as shown.
`
`Description of mark
`The mark consists of a design of an archer using a bow with the stylized text "orion realty nyc llc" to the right with lines on either side of "llc".
`
`SIGNATURE(S)
`Response Signature
`
`

`

`Signature: /Seth Willig Chadab/(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)Date: 10/24/2014
`Signatory's Name: Seth Willig Chadab
`Signatory's Position: Associate Attorney, DunlapWeaver PLLC, Maryland Bar Member
`
`Signatory's Phone Number: 7037777319
`
`The signatory has confirmed that he/she is an attorney who is a member in good standing of the bar of the highest court of a U.S. state, which
`includes the District of Columbia, Puerto Rico, and other federal territories and possessions; and he/she is currently the applicant's attorney or an
`associate thereof; and to the best of his/her knowledge, if prior to his/her appointment another U.S. attorney or a Canadian attorney/agent not
`currently associated with his/her company/firm previously represented the applicant in this matter: (1) the applicant has filed or is concurrently
`filing a signed revocation of or substitute power of attorney with the USPTO; (2) the USPTO has granted the request of the prior representative to
`withdraw; (3) the applicant has filed a power of attorney appointing him/her in this matter; or (4) the applicant's appointed U.S. attorney or
`Canadian attorney/agent has filed a power of attorney appointing him/her as an associate attorney in this matter.
`
`Serial Number: 86310204
`Internet Transmission Date: Fri Oct 24 15:15:02 EDT 2014
`TEAS Stamp: USPTO/ROA-XX.XXX.XX.XX-20141024151502359
`812-86310204-500aebfb4b4f5671c49f49729dc
`4e84467b75998b325c74c86b5c77d5a8da2a44c-
`N/A-N/A-20141024150848106528
`
`(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)(cid:160)
`

`

`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Serial No.:
`Mark:
`
`86310204
`ORION REALTY NYC LLC
`
`ORION REALTY NYC LLC
`Applicant:
`Office Action Date: September 30, 2014
`
`RESPONSE TO SEPTEMBER 30, 2014 OFFICE ACTION
`
`This Response is filed in reply to the Office Action e—mailed on September 30, 2014. The
`Applicant respectfully submits the following response. Applicant submits that the above-
`identified trademark application for ORION REALTY NYC LLC is in condition for allowance
`to publication.
`
`Potential Section 2jd[ Refusal: Likelihood of Confusion
`
`Applicant submits a preliminary response to the potential section 2(d) refusal; however,
`Applicant reserves all rights to provide a detailed and more descriptive response if Examining
`Attorney Anne M. Farrell raises a Section 2(d) refusal in a subsequent Office Action.
`
`Preliminary Response with Reservation ofRights
`
`The USPTO has refused registration of the Applicant’s mark, ORION REALTY NYC LLC,
`“because of a likelihood of confiision with the marks in U.S. Registration Nos. 1974896,
`2790239, and 2790240.” “[T]he question of confusion is related not to the nature of the mark
`but to its effect ‘when applied to the applicant.” In re El. du Pont de Nemous & C0., 476 F.2d
`1357, 1360-61 (C.C.P.A. 1973). The United States Court of Customs and Patent Appeals listed
`thirteen factors to weigh in the likelihood of confusion analysis and stated that all of the factors
`must be considered “when of record.” Id. at 1361. The Examining Attorney has indicated that
`similarity of the marks, similarity or relatedness of the goods and/or services, and similarity of
`the trade channels of the goods and/or services weigh against the Applicant’s mark. However,
`Applicant respectfully asserts that when all factors are weighed, the majority weighs against the
`existence of a likelihood of confusion.
`
`(I) Similarity of Conflicting Designations
`
`The first factor is the similarity of the conflicting designations, including in their appearance,
`sound, meaning or connotation, and commercial impression. In re E. I du Pont de Nemours &
`Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973). A similar phrase found in two
`marks is not dispositive of a confusing similarity between the marks when the marks give off
`different commercial expressions. See Kellogg Co. 12. Pack ’em Enterprises, Inc, 951 F.2d 330
`(Fed. Cir. 1991). When Applicant’s mark ORION REALTY NYC LLC, and Registrant’s
`
`

`

`ORION marks are compared, the appearance is not confusingly similar.
`
`A licant’s Desi Mark
`
`Cited Registered Marks
`
`ORION (Reg. No. 1974896)
`INTERNATIONAL CLASS 036
`
`commercial and residential real estate
`O
`brokerage
`INTERNATIONAL CLASS 037
`RE
`‘ - commercial and residential real estate
`
`INTERNATIONAL CLASS 036 (as amended)
`Real estate investment services; Real estate
`investment trust management services; Real
`estate management consultation; Real estate
`
`management services; Real estate service,
`namely, rental property management
`
`ORION (Reg. No. 2790239)
`INTERNATIONAL CLASS, 035
`Real estate management
`* -1-
`
`*
`
`0 0 N (Re No 2790240)
`INTERNATIONAL CEASS 636
`Commercial and residential real estate
`
`brokerage; real estate management
`
`A) ADDING DIFFERENT TERMS TO A COMMON ELENIENT CAN REDUCE A
`LIKELIHOOD OF CONFUSION
`
`Courts across the country have long held that the addition of different terms to a common
`element appreciably reduces the likelihood of confusion between two marks. See US Trust v.
`US. States Trust Co., 210 F. Supp. 2d 9, 27-28 (D. Mass 2002) (UNITED STATES TRUST
`COMPANY not confusingly similar to UNITED STATES TRUST COMPANY OF BOSTON,
`both for financial services); Colgate Palmolive Co. V. Carter-Wallace, Inc, 432 F.2d 1400, 1402,
`167 U.S. P. Q. 529, 530 (C.C.P.A. 1970) (PEAK PERIOD not confusing similar to PEAK);
`Servo Corp. Am. 12. Servo—TekProa’. Co, 289 F. 2d 955, 981 129 U.S.P.Q. 352, 353 (C.C.P.A.
`1961) (SERVOSPEED not confiisingly similar to SERVO); Sweats Fashions, Inc. v. Panmll
`Knitting Co., 833 F. 2d 1560, 1564, 4 U.S.P.Q. 2d 1793, 1796 (Fed. Cir. 1987) (SWEATS not
`confusing similar to ULTRA SWEATS, both for sportswear); Gen. Mills Inc. v. Kellog C0., 824
`F. 2d 622, 627, 3 U.S.P.Q. 2d 1442, 1446 (8th Cir. 1987) (OATMEAL RAISIN CRISP not
`confusingly similar to APPLE RASIN CRISP, both for breakfast cereal); Consol. Cigar v. RJR
`Tobacco Co, 491 F.2d 1265, 1267, 181 U.S.P.Q. 44, 45 (C.C.P.A. 1974) (DUTCH APPLE for
`pipe tobacco not confilsingly similar to DUTCH MASTERS for cigars); Wooster Brush Co. v.
`Prager Brush Co., 231 USPQ 316 (TTAB 1986) (POLY PRO and POLY FLO not confiisingly
`similar).
`
`mark .
`
`It is well established that ''likelihood of confusion cannot be predicated on dissection of a
`. the ultimate conclusion rests on consideration of the marks in their entireties." In re
`
`.
`
`National Data Corp, 224 U.S.P.Q. 749, 751 (Fed. Cir. 1985); TMEP §1207.01(b)(iv). The
`Examining Attorney must look to the overall impression that the marks create, rather than
`
`2
`
`

`

`comparing individual parts. See Mead’ Data Cent, Inc. v. Toyota Motor Sales, U.S.A., Inc., 875
`F.2d 1026, 1029, 10 USPQ2d 1961 (2d Cir. 1989). When the marks are compared in their
`entiretics, they are significantly different in visual and aural impression and in overall
`commercial impression. Similarities and differences must both be considered in the analysis. In
`re Electrolyte Laboratories Inc., 929 F.2d 645, 647, 16 USPQ2d 1239, 1240 (Fed. Cir. 1990)
`(K+ and design for dietary potassium supplement held not likely to be confused with K+EFF
`(stylized) for dietary potassium supplement). See also Lugino ’s Inc. v. Stouffer Corp., 50
`USPQ2d 1047, 1051 (8th Cir. 1999) (“Lean Cuisine” not confusingly similar to “Michelina’s
`Lean ‘N Tasty” despite both marks use of the word “Lean” for low—fat frozen foods).
`
`While Registrant’s marks consist of one word, the Applicant is using four separate terms.
`The structure and format are unique to the commercial impression of the Registrant’s mark. The
`Applicant’s mark includes the terms “REALTY,” “NYC,” and “LLC.” Phonetically the marks
`differ in sound as the Applicant’s mark consists of eleven syllables while the Registrant’s mark
`only consists of three. Similar to Kellogg C0,, despite the shared term, the marks have different
`commercial impressions. For at least these reasons, Applicants asserts that the mark ORION
`REALTY NYC LLC is different than the marks for ORION.
`
`B) ADDING DIFFERENT VISUAL ELEMENTS TO COMMON TERMS CAN
`REDUCE A LIKELIHOOD OF CONFUSION
`
`Visually, ORION REALTY NYC LLC is easily distinguished from the ORION marks because
`ORION REALTY NYC LLC includes a composite of wording and a visual component. The
`design from the Applicant’s mark creates a distinct visual separation. The Applicant’s mark
`includes an image of a Spartan warrior with a bow and arrow, as well as unique placement of the
`words “REALTY,” “NYC,” and “LLC.” Under a likelihood of confusion analysis, marks are to
`be compared in their entireties. To ignore the presence and impact that the additional visual and
`textual components have on the Applicant’s mark would be a failure to review the marks in their
`entirety.
`
`In conclusion, when comparing the marks side—by—side, they do not appear confusingly similar
`for purposes of a likelihood of confiision analysis. The design feature and additional Wording of
`the Applicant’s mark are sufficient to give it a different appearance and different commercial
`impression. Therefore, this factor Weighs strongly in the Applicant’s favor.
`
`(2) Similarity or Dissimilarity and the Nature of the Goods or Services
`
`The second factor is the similarity or dissimilarity and the nature of the goods or services as
`described in an application or registration or in connection with a prior use of the mark. In re E.
`I du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563, 567 (C.C.P.A. 1973).
`Where the goods of the Applicant and Registrant are different, the Examining Attorney bears the
`burden of showing that different goods would commonly be provided by the same source. See
`e.g., In re Shipp, 4 U.S.P.Q.2d 1174, 1176 (TTAB 1987) (Examining Attorney's refusal reversed
`because Applicant's use of PURITAN in connection with dry cleaning services and Registrants‘
`uses of PURITAN in connection with dry cleaning equipment and dry cleaning chemicals lack of
`proof of trade practices and fail to show likelihood, rather than possibility, of confusion).
`
`

`

`The issue is not Whether the goods will be COI1fi1S6d with each other, but rather whether the
`public will be confused about their source. See Safety-Kleen Corp. v. Dresser Indus, Inc., 518
`F.2d 1399, 1404, 186 USPQ 476, 480 (C.C.P.A. 1975). Ifthe goods or services in question are
`not related or marketed in such a way that they would be encountered by the same persons in
`situations that would create the incorrect assumption that they originate from the same source,
`then, even if the marks are identical, confusion is not likely. See, e.g., Shen Manufacturing Co. v.
`Ritz Hotel Ltd, 393 F.3d 1238, 73 USPQ2d 1350 (Fed. Cir. 2004); Quartz Radiation Corp. v.
`Comm/Scope Co., 1 USPQ2d 1668 (TTAB 1986).
`
`In the present case, the Examining Attorney makes no statement as to the relatedness or
`marketing of the goods and services of the marks.
`It is not enough to suggest that the services
`provided by the Registrant and Applicant are related because they are both related real estate.
`The Examining Attorney must show that the public will be confused as to the source of the
`Applicant’s services. See Paula Payne Prods. Co. v. Johnson ’s Pub ’g Co., 473 F.2d 901, 902,
`177 USPQ 76, 77 (C.C.P.A. 1973) (“[T]he question is not whether people will confuse the
`marks, but rather whether the marks will confilse people into believing that the goods they
`identify emanate from the same source”), In re White Rock Disrilleries Inc, 92 USPQ2d 1282,
`1285 (TTAB 2009) (failing to establish that wine and vodka infilsed with caffeine are related
`goods because there was no evidence that vodka and wine emanate from a single source under a
`single mark or that such goods are complementary products that would be bought and used
`together).
`
`Here, there is no evidence provided by the Examining Attorney that the Registrant engages in
`real estate investment services. Further review of the Registrant’s website shows that they are
`predominantly a commercial property development firm in the San Antonio area. See Exhibit A.
`Therefore, it is not likely that the public would be confused by the source of the Applicant’s and
`the Registrant’s goods.
`
`A) THE SERVICES AS THEY ARE MARKETED APPEAR DISTINCTLY
`DIFFERENT
`
`The Applicant’s services are easily distinguished from the Registrant’s services by its unique
`commercial impression. The Applicant provides investment services and consultancy for
`acquisition of properties in the tri-state New York real estate market. Applicant also provides
`property management services for residential properties. However, Applicant does not engage in
`commercial real estate development. The Applicant’s services predominately are for investment,
`with the support of limited partners, in undervalued residential properties in New York City and
`the surrounding boroughs. See Exhibit B.
`
`The Registrant’s services are focused on the commercial real estate industry. Registrant
`describes itself a “full service” commercial real estate frrrn, offering a variety of services in this
`field, including “development, leasing, property management, and construction.” While the
`Registrant does market its property management services, according to the Registrant’s website,
`these services are for commercial and industrial space only. See Exhibit C.
`
`

`

`B) THE CONSUMERS OF THE SERVICES DIFFER THEREFORE THE
`COl\/INIERCIAL IMPRESSION DIFFERS
`
`The Applicant has begun to market its services under ORION REALTY NYC LLC for real
`estate investment services and consultancy. Ordinary clients of the Applicant’s services will be
`wealthy real estate investors seeking investments in the New York City residential real estate
`market. The Applicant’s market strategy is to identify undervalued residential proprieties in
`New York City and surrounding areas, then acquire, upgrade, and manage the properties as part
`of an investment group. The specific purpose for the Applicant’s services further creates a
`unique commercial impression that is distinctive and unrelated to the Registrant’s impression.
`
`The Registrant is a commercial real estate development firm located in San Antonio, Texas.
`Their clients are technology—driven industries seeking expertise in developing commercial and
`industrial properties in San Antonio, Texas. See Exhibit A. The Registrant’s website and an
`internet search do not reveal any projects outside of the San Antonio metropolitan area.
`
`The only similarity between the Applicant’s and Registrant’s trademarks is their relation to real
`estate in general. This similarity is insufficient to support a finding of likelihood of confusion.
`There is no evidence that the Applicant and the Registrant market their services to the same or
`similar clients. The Applicant and Registrant have specific location-based markets and do not
`target each other’s consumers. Finally, Applicant respectfillly asserts that its services are not
`related nor marketed in a way that would suggest they emanate from the Registrant. Therefore,
`this factor weighs strongly against finding likelihood of COI1fi1Sl0I1.
`
`(3) Similarity or Dissimilarity ofEstablished Likely to Continue Trade Channels
`
`The third factor is the similarity or dissimilarity of established, likely-to-continue trade channels. In
`re E. I. du Pom‘ de Nemours & C0., 476 F.2d at 1361, 177 USPQ at 567. This factor heavily weighs
`against a finding of a likelihood of confusion. Even where two marks are identical, courts and the
`TTAB routinely hold that there is no likelihood of confusion “if the goods or services in question
`are not related in such a way that they would be encountered by the same persons in situations
`that would create the incorrect assumption that they originate from the same source.” T.M.E.P. §
`1207.l(a)(1) (citing Local Trademarks, Inc. v. Handy Boys, Inc, 16 U.S.P.Q.2d 1156 (T.T.A.B.
`1990) (LITTLE PLUMBER for drain opener not confusingly similar to LITTLE PLUMBER and
`Design for advertising services).
`
`Here, it is unclear as to the trade channels the Registrant uses. However, it appears from the
`Registrant’s website that ORION Partners is exclusively servicing the San Antonio metropolitan
`area. See Exhibit A.
`
`The trade channels for the Applicant’s services are limited to investing in properties in the New
`York tri—state area. Applicant has begun promoting its services through their website, but will
`predominantly rely on referrals and networking.
`
`The Registrant’s and Applicant’s services move through very discrete trade channels based on
`their locations. It is highly unlikely that consumers would believe the trademarks emanate from
`the same source because it is unlikely they would be encountered by consumers in similar
`
`5
`
`

`

`situations. The shared use of the word, “ORION,” is not likely to cause confusion by consumers
`seeking to invest in residential properties in New York City or in commercial properties in San
`Antonio, Texas. Therefore, this factor weighs against the existence of likelihood 0fCOI1fi1S1011
`and in favor of the Applicant.
`
`(4) Conditions Upon Sales Are Made
`
`The fourth factor is the conditions under which and buyers to whom sales are made (i.e. impulse
`V. careful). In re E. I. du Pont de Nemours & Co., 476 F.2d at 1361, 177 USPQ at 567. Consumers
`interested in Applicant’s services will be sophisticated residential real estate investors.
`Therefore, consumers will carefully identify ORION REALTY NYC LLC when searching for
`the Applicant’s services. It is well—settled that the likelihood of confusion is reduced where
`purchasers and potential purchasers of the services at issue are sophisticated. See Electronic
`Design & Sales, Inc. 12. Electronic Data Sys. Corp, 954 F.2d 713, 718 (Fed. Cir. 1992) (no
`confusion between identical marks where, inter alia, both parties’ goods and services “are
`usually purchased after careful consideration by persons who are highly knowledgeable about the
`goods or services and their source”); see also T.M.E.P. § l207.01(d)(vii) (care in purchasing
`tends to minimize likelihood of confusion).
`
`The Applicant’s customers are likely to be individuals and businesses seeking to invest in New
`York’s explosive residential real estate market. As such, Applicant’s customers are likely to
`exercise a high level of care and are not likely to be confiised into thinking Registrant’s services
`originates from, or is sponsored by, Applicant or vice versa. This factor weighs heavily against a
`likelihood of confusion between these two marks.
`
`(5) Fame ofthe Prior Mark
`
`The fifth factor is the fame of the prior mark (eg., sales, advertising, length of use, etc.) Id.
`There is no evidence that the prior mark is famous. This factor weighs against a likelihood of
`confilsion.
`
`(6) Number and Nature ofSimilar Marks in Use on Similar Goods
`
`The sixth factor is the number and nature of similar marks in use in connection with similar
`
`services. Id. In this case, the USPTO has not made any assertions as to the number and nature of
`marks used in connection with real estate investment services. Therefore, Applicant asserts that
`this factor weighs against finding a likelihood of confiision.
`
`(7) Nature and Extent ofAny Actual Confusion
`
`The seventh factor concerns the nature and extent of any actual confusion. Id. No evidence exists
`that any consumer has been confused by the use of these two marks. Applicant asserts that this
`factor weighs against finding a likelihood of confusion.
`
`(8) Length of Time During and Conditions under which There Has Been Concurrent Use
`Without Evidence ofA ctual Confusion
`
`

`

`The eighth factor is the length of time during and conditions under which there has been
`concurrent use without evidence of actual COI1fi1Sl0Il. Id. Applicant’s mark is an intent-to-use
`mark. Therefore, there is no concurrent use of the marks. Therefore, this factor is at least
`neutral.
`
`(9) Variety of Goods on which a Mark Is or Is Not Used
`
`The ninth factor is the variety of goods on which a mark is or is not used (house mark, “family”
`mark, product mark). In re E. I. du Pont de Nemours & C0,, 476 F.2d at 1361, 177 USPQ at 567.
`The Cited Registrations are part of a family of marks. Consequently, this factor is also at least
`neutral.
`
`(10) Market Interface Between Applicant and the Owner ofa Prior Mark
`
`The tenth factor is the market interface between Applicant and the owner of a valid, prior mark.
`Id.
`In this case, there has been no interface between the Applicant and the Registrant, and
`therefore this factor is also in the Applicant’s favor.
`
`(11) Extent to which Applicant has a Right to Exclude Others from Use of its Mark on its
`Goods
`
`The eleventh factor is the extent to which Applicant has a right to exclude others from use of its
`mark on its goods. Id. The Applicant cannot claim rights to exclusive use of the mark because
`Applicant’s has not yet started using the mark. This factor is also neutral.
`
`(12) Extent ofPotential Confusion
`
`The twelfth factor is the extent of potential confusion, ie., whether de minimis or substantial. Id.
`Registrant’s use of the trademark does not involve substantial use of the mark in all fifty states.
`Since the Registrant’s mark is used in specific industries for specific clients, the potential for
`confusion is not likely to extend across the country through all economic classes. Therefore, the
`potential for confusion is de minimis and weighs heavily against a likelihood of confusion.
`
`(13) Whether There Are any Other Established Facts Probative ofthe Effect of Use
`
`The thirteenth factor looks to whether there are any other established facts probative of the effect
`of use. Applicant reserves all rights to provide a detailed and more descriptive response on this
`factor if the USPTO should raise a Section 2(d) refusal in a subsequent Office Action.
`
`Conclusion
`
`When determining whether an Applicant’s mark creates a likelihood of confusion, with marks
`covered by cited registrations " [a] showing of mere possibility of confusion is not enough; a
`substantial likelihood that the public will be confused must be shown." Omaha Natl. Bank, 633
`F. Supp. at 234, 229 U.S.P.Q. at 52. Applicant’s trademark is dissimilar to the Registrant’s
`trademark visually, in sound, and in commercial impression. Applicant offers services that are
`not related to Registrant’s services. Finally, Applicant’s trade channels do not overlap with the
`
`

`

`Registrant. Applying the factors set forth in DuPont, and absent “substantial doubt,” In re Mars,
`Inc., 741 F. 2d 395, 396 222 U.S.P.Q. 938 (Fed. Cir. 1984), registration ofApplicant’s mark is
`appropriate.
`
`For these reasons and others, the majority of these factors Weigh against a finding of a likelihood
`of confusion. Applicant respectfully submits that the mark for ORION REALTY NYC LLC
`does not create a likelihood of confusion with the ORION Partners, Inc. registered trademarks.
`
`

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