THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF
THE TTAB

Mailed:
August 30, 2006

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

United Country Real Estate, Inc., by change of name from
First Horizon Corporation

v.

Christopher B. Colwell
_____

Opposition No. 91158548
to application Serial No. 78181779
filed on November 5, 2002
_____

Thomas H. Van Hoozer and Cheryl L. Burbach of Hovey Williams
LLP for United Country Real Estate, Inc.

Christopher B. Colwell, pro se.
______

Before Seeherman, Zervas and Walsh, Administrative Trademark
Judges.

Opinion by Seeherman, Administrative Trademark Judge:

United Country Real Estate, Inc., by change of name

from First Horizon Corporation,1 has opposed the application

1
After the institution of this proceeding opposer’s name was
changed, and this change was recorded in the Assignment Division
of the USPTO. The Board changed the captioning of this
proceeding on May 10, 2005 to reflect the change of name.
Opposition No. 91122373

of Christopher B. Colwell to register REALTY UNITED, with

the word REALTY disclaimed, as a mark for “franchising

services, namely, rendering technical assistance to others

in the establishment and or operation of real estate

brokerage businesses and associated services.”2 As grounds

for opposition, opposer has alleged that it, or its

predecessors in interest, has continuously used the

trademarks UNITED, UNITED COUNTRY and UNITED NATIONAL REAL

ESTATE and design, or variations thereof, for real estate

brokerage services since prior to the filing date of

applicant’s application; that opposer is the owner of

registrations for the marks UNITED for “real estate

brokerage services,”3 UNITED COUNTRY for a “real estate

magazine”4 and for “real estate brokerage services”5 and

UNITED COUNTRY and design, as shown below, for “real estate

brokerage services”;6

2
Application Serial No. 78181779, filed November 5, 2002,
pursuant to Section 1(b) of the Trademark Act (intent-to-use).
3
Registration No. 1109683, issued December 19, 1978; Section 8
& 15 affidavits accepted and acknowledged; renewed.
4
Registration No. 1770019, issued May 11, 1993; Section 8 & 15
affidavits accepted and acknowledged; renewed.
5
Registration No. 2186596, issued September 1, 1998. Opposer
submitted a status and title copy of this registration, prepared
by the USPTO on November 3, 2003, with its notice of opposition
filed on November 12, 2003. Consequently, the copy of the
registration does not indicate whether a Section 8 affidavit was
subsequently filed. In accordance with Board practice in such
circumstances, we have ascertained from Office records that
Section 8 & 15 affidavits were accepted and acknowledged.
6
Registration No. 2188368, issued September 8, 1998. Opposer
submitted a status and title copy of this registration, prepared
by the USPTO on November 7, 2003, with its notice of opposition
filed on November 12, 2003. Consequently, the copy of the

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Opposition No. 91122373

that opposer is the owner of a family of marks bearing the

common term UNITED in the real estate brokerage field; that

opposer provides its real estate brokerage services through

its affiliated licensees and franchisees throughout the

United States, and has provided franchising services

including technical and other supporting services to its

licensees and franchisees; and that applicant’s use of the

mark REALTY UNITED is likely to cause confusion with

opposer’s UNITED family of marks, including UNITED, UNITED

COUNTRY and UNITED NATIONAL REAL ESTATE. The notice of

opposition was accompanied by status and title copies of

opposer’s pleaded registrations, and therefore these

registrations are of record. See Trademark Rule

2.122(d)(1).7

registration does not indicate whether a Section 8 affidavit was
subsequently filed. We have therefore ascertained that Section 8
& 15 affidavits were accepted and acknowledged.
7
Opposer also pleaded ownership of Registration No. 1348533 for
UNITED NATIONAL REAL ESTATE and design for “real estate brokerage
services,” but Office records show that this registration expired
pursuant to Section 9 of the Trademark Act. While this
registration has been given no consideration, opposer has
submitted testimony that the mark is still in use.

3
Opposition No. 91122373

In his answer, applicant admitted that “opposer has

continuously used the trademarks UNITED COUNTRY and UNITED

NATIONAL REAL ESTATE for real estate brokerage services from

a date prior to the filing date or the claimed date of first

use of the opposer application”; that opposer is the owner

of Registration Nos. 1109684, 1348533, 1770019, 2186596 and

2188368; that “Opposer has spent substantial sums of money

in advertising and promoting its real estate magazine

distributed under the UNITED COUNTRY mark”; that “Opposer

has spent substantial sums of money in advertising and

promoting its real estate brokerage services rendered under

the UNITED COUNTRY service mark” and that “Opposer has spent

substantial sums of money in advertising and promoting its

real estate brokerage services rendered under the UNITED

COUNTRY AND DESIGN service marks”; that “Opposer is owner of

marks UNITED, UNITED COUNTRY, UNITED COUNTRY AND DESIGN, and

UNITED NATIONAL REAL ESTATE AND DESIGN, all marks being

registered in International Class 36”; that “Opposer, using

the marks UNITED COUNTRY and UNITED COUNTRY AND DESIGN

provides its real estate services through affiliated

licensees and franchisees spanning the United States, and

that Opposer, under these marks, has provided franchising

services including technical and other supporting services

to its licensees and franchisees” prior to applicant’s

filing date; that “Opposer, itself or through its licensees

4
Opposition No. 91122373

or franchisees has used the marks UNITED COUNTRY and UNITED

COUNTRY AND DESIGN throughout the United States, and as a

result of such use, the advertising of these marks and the

rendering of real estate brokerage services, said marks have

acquired substantial reputation and goodwill as indicating

the Opposer as the source of the real estate brokerage

services in connection with the above mentioned mark”; and

that applicant “provides services in regard to franchising,

and that its franchisees or licensees provide general real

estate brokerage services to the public.” Applicant has

otherwise denied the salient allegations of the notice of

opposition. We note that applicant has also, in denying

many of these allegations, included argument and/or further

explanation for his denials. Applicant has also submitted a

number of exhibits with his answer; such exhibits cannot be

made of record in this manner.

The record includes, by operation of the rules, the

pleadings and the file of the opposed application. Only

opposer has submitted evidence, which consists of the trial

testimony, with exhibits, of Louis Francis, opposer’s

president; applicant’s responses to certain of opposer’s

interrogatories; applicant’s responses to certain of

opposer’s requests for admission; opposer’s four pleaded

registrations for UNITED, UNITED COUNTRY and UNITED COUNTRY

and design, as set forth above, status and title copies of

5
Opposition No. 91122373

which were submitted with opposer’s notice of opposition;8

certain printed publications; and copies of certain

decisions and/or orders of the Courts and the Board,

submitted as official records pursuant to Trademark Rule

2.122(e).9

Only opposer filed a brief. An oral hearing was not

requested.

Opposer’s predecessor was founded in 1925 as United

Farm Agency. In 1986, United National Real Estate was

formed, through an asset purchase of the previous company.

At that point the company used the marks United Farm, United

National, United and United Commercial. In 1990 opposer

First Horizon Corporation, doing business as United National

Real Estate, acquired the assets of United National Real

Estate, Inc. and later changed its name to United Country

Real Estate, Inc. Some franchises continue to operate under

the mark United National, while the majority use the mark

United Country Real Estate. Since 1925 opposer or its

8
Although opposer also submitted a copy of Registration No.
1348533 for UNITED NATIONAL REAL ESTATE and design with its
notice of reliance that was filed on October 13, 2005, as noted
in footnote 7, this registration has expired.
9
In its brief opposer states that the record consists of 57
exhibits, which it enumerates. However, it is clear that opposer
made of record additional exhibits, including applicant’s
responses to certain requests for admission which opposer
specifically refers to in its brief. We therefore treat all the
materials which opposer properly made of record as being of
record, not just those exhibits which opposer listed in section
III of its brief.

6
Opposition No. 91122373

predecessors have used the mark UNITED in one form or

another.

Between 1925 and 1975 the company enjoyed rapid growth.

Its network of independent brokers increased in size; as of

January 1, 2001 opposer had 323 franchisees, and as of the

end of 2005 the number had reached 500. These franchisees

are located throughout the United States, in 35 states.

Opposer offers such services to its franchisees as marketing

tools (catalogs, advertisements, website, signs, brochures)

and technical support (help with their computer systems).

Opposer has marketed its franchising services through

advertisements in real estate publications, franchise sales

teams that call on brokers, direct mail to real estate

brokers, trade shows, real estate conventions, and its

website.

The only information we have about applicant is from

his discovery responses and admissions that were made of

record by opposer. Applicant is the founder and owner of

Realty United, LLC and the owner of Realty United—Triangle,

which provides real estate brokerage/consulting services.

Applicant uses or will use his mark in connection with the

promotion and pending sale of real estate franchising

services; franchisees will offer real estate brokerage

services using applicant’s mark REALTY UNITED as part of

their trade names, for example, “Realty United—Triangle.”

7
Opposition No. 91122373

Applicant did not make any use of the name or mark REALTY

UNITED prior to October 28, 2002. At the time applicant

adopted his mark, he was aware of opposer’s use of its mark.

As of July 5, 2005, the date applicant responded to

opposer’s interrogatories, only one real estate brokerage,

Realty United-Triangle, was associated with applicant. As

noted above, this brokerage is owned by applicant. As of

that date, applicant had not entered into any licensing or

franchising agreements, and no franchises existed.

Applicant has not had any purchasers of its franchising

services, although it has had purchasers of its real estate

brokerage services. Applicant offers his services in the

Raleigh-Durham-Chapel-Hill area (the “Triangle” area) of

North Carolina. Applicant has used his mark on or in

connection with marketing postcards, websites, signs, press

releases and classified ads, although it is not clear

whether such uses are with respect to his real estate

brokerage services or are for the advertising of his

franchising services.

Priority is not in issue in view of opposer’s

registrations, which are of record. King Candy Company v.

Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108

(CCPA 1974). Moreover, the evidence shows that opposer

began using its various UNITED marks for both real estate

8
Opposition No. 91122373

brokerage services and franchising services prior to the

earliest use date that could be claimed by applicant.10

Our determination of the issue of likelihood of

confusion is based on an analysis of all of the probative

facts in evidence that are relevant to the factors set forth

in In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177

USPQ 563 (CCPA 1973). See also, In re Majestic Distilling

Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir.

2003). In this case, opposer has identified three factors

that are relevant: similarity of the marks, similarity of

the services, and similarity of the channels of trade.

The first du Pont factor is the similarity of the

marks. Opposer has pleaded ownership of, and has submitted

registrations and testimony regarding several marks

containing or consisting of the word UNITED. Because the

mark UNITED per se is the closest mark to applicant’s mark,

UNITED REALTY, we will concentrate our analysis on a

comparison of opposer’s mark UNITED with UNITED REALTY. It

is a well-established principle that, in articulating

reasons for reaching a conclusion on the issue of likelihood

10
As noted, applicant has admitted that he did not begin using
his mark prior to October 28, 2002. In an answer to an
interrogatory, made of record by opposer, applicant claimed he
began using the mark REALTY UNITED on November 5, 2002. It is
not clear from this response whether this use was in connection
with the franchising services identified in his application,
rather than real estate brokerage services. In view of the clear
admission that he made no use of the mark prior to October 22,
2002 whether or not he used the mark in November 2002 has no
effect on the question of priority.

9
Opposition No. 91122373

of confusion, there is nothing improper in stating that, for

rational reasons, more or less weight has been given to a

particular feature of a mark, provided the ultimate

conclusion rests on a consideration of the marks in their

entireties. In re National Data Corp., 753 F.2d 1056, 224

USPQ 749, 751 (Fed. Cir. 1985). In applicant’s mark, UNITED

REALTY, the term UNITED is clearly the dominant element.

Applicant’s franchising services, as shown by his

identification, as well as the information he provided in

discovery, deal with real estate brokerage, and he has

provided a disclaimer of “realty” because of the

descriptiveness of this term. Opposer has also submitted

dictionary definitions of “realty” showing that this word

means “real estate.”11 Thus, the word REALTY in applicant’s

mark does not serve to distinguish his mark from opposer’s;

purchasers and prospective purchasers will view the word

UNITED in his mark as the portion with source-indicating

significance. Accordingly, the marks UNITED and UNITED

REALTY, when considered in their entireties, are virtually

identical in appearance, pronunciation, connotation and

commercial impression. This du Pont factor favors a finding

of likelihood of confusion.

11
See, for example, Webster’s New World College Dictionary, 3d
ed. © 1996.

10
Opposition No. 91122373

The next du Pont factor is the similarity of the

services. Applicant has admitted that his identified

franchising services and real estate brokerage services are

related. Request for Admission No. 12 (Opposer’s exhibit

No. 63). Further, applicant has admitted that “applicant’s

agreements with REALTY UNITED real estate brokerage

franchises include the right for the real estate brokerage

franchises to use the mark REALTY UNITED in connection with

their real estate brokerage services.” Request for

Admission No. 10 (Opposer’s exhibit No. 62). Moreover, the

record shows that independently owned real estate brokerage

offices may become franchisees of real estate brokerage

companies, so that they can take advantage of the more

national marketing tools that a larger company can offer,

including referrals from customers who are seeking to obtain

a property in a particular location. Opposer, in fact,

advertises its franchising services to real estate brokerage

offices in the same catalogs in which it offers its real

estate brokerage services. Opposer’s witness has testified

that brokerage services and franchising services are

interconnected, in that real estate brokerage services are

used by franchisees, and those same brokerage services are

used to market the franchise system. The foregoing evidence

and admissions are sufficient to demonstrate the relatedness

11
Opposition No. 91122373

of applicant’s franchising services and opposer’s real

estate brokerage services.

However, in addition to the similarity of opposer’s

real estate brokerage services, which are the subject of its

registration for UNITED, and applicant’s identified

franchising services for the operation of real estate

brokerage businesses, the evidence also shows that opposer

renders franchising services under the mark UNITED. In

particular, Exhibit 15 to the Francis deposition prominently

features UNITED as a trademark as part of an advertisement

seeking franchisees. Thus, applicant’s services are not

only closely related to opposer’s real estate brokerage

services, but they are legally identical to opposer’s

franchising services. The factor of the similarity of the

services favors a finding of likelihood of confusion.

The third du Pont factor is the similarity of channels

of trade. Since both opposer’s and applicant’s franchising

services may be offered to real estate brokerage businesses,

the channels of trade must be deemed to be the same.

Further, real estate brokerage businesses, the consumers of

applicant’s franchising services, would, because they are in

the business, be exposed to opposer’s real estate brokerage

services. This factor, too, favors opposer.

Opposer has identified only the above three factors as

being relevant to our decision of the issue of likelihood of

12
Opposition No. 91122373

confusion. To the extent that other du Pont factors are

applicable, we find that they are either neutral or that

they favor a finding of likelihood of confusion. For

example, there is no evidence of any third-party use of

UNITED marks. On the contrary, opposer has submitted

evidence that it has obtained judgments enjoining the use of

UNITED for real estate brokerage services. See United

National Real Estate, Inc. v. Elwood R. Morgan, Civ. Action

No. 89-5421 (ED Pa Nov. 28, 1990); United National Real

Estate, Inc. v. Andisch, Inc. et al, Civ. Action No. 88-C-

539 (D Col June 30, 1988); and First Horizon Corp. v. Tim

Singleton et al, Civ. Action No. 1:96CV000011LMB (Sept. 18,

1996). There is also no evidence of actual confusion, but

there is no evidence that applicant has obtained any

franchisees, nor can we determine whether applicant has

actually advertised or marketed his franchising services, or

if he has, to what extent. Therefore, we cannot conclude

that there has been sufficient use or advertising of

applicant’s mark for such services that, if confusion were

likely to occur, it would have occurred.

We recognize that the relevant class of purchasers for

franchising services in the field of real estate would be

real estate brokers, and that such purchasers would be more

sophisticated and careful than the general public. However,

given that applicant’s franchising services and opposer’s

13
Opposition No. 91122373

franchising services are legally identical, and the marks

are virtually identical, in that the additional word REALTY

in applicant’s mark has no source-indicating significance,

even sophisticated and careful purchasers are likely to be

confused. As for opposer’s real estate brokerage services,

given the close relationship between such services and

franchising services in the field of real estate brokerage,

sophisticated and careful purchasers are likely to believe

that there is a connection as to source between these

services if they are offered under such similar marks.

After considering all the du Pont factors on which

there is evidence, we find that applicant’s use of UNITED

REALTY for “franchising services, namely, rendering

technical assistance to others in the establishment and or

operation of real estate brokerage businesses and associated

services” is likely to cause confusion with opposer’s mark

UNITED for real estate brokerage services and for

franchising services.

Decision: The opposition is sustained.

14