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A Texas federal court has considered whether logo used by a Texas brokerage infringed upon RE/MAX’s trademarks.
Pavnouty Abraham (“Owner”) created Trend Setter Realty, LLC (“Brokerage”) in 2005. At that time, the Owner hired Deborah Miller (“Broker”) as the broker of record. The Broker had formerly associated with two RE/MAX International, Inc. (“RE/MAX”) franchises. RE/MAX has a network of franchises that provide brokerage services, including offices in the Houston area.
RE/MAX has several registered federal trademarks, most dating back to the late 1970s. All of the marks share a rectangular design consisting of three equally spaced horizontal bars. The top bar is red, the middle bar is white, and the bottom bar is blue. Some of the marks contain other design elements, such as the RE/MAX balloon. RE/MAX’s franchises incorporate the marks into their advertisements and other materials.
The Brokerage obtained a federally registered trademark in 2007. The Brokerage’s mark is a rectangular design with three bars: a red bar on top, a white bar in the middle, and a blue bar on the bottom. In the middle of the white bar appears a stylized representation of a house.
RE/MAX became aware of the Brokerage’s mark soon after the Broker left a RE/MAX franchise and joined the Brokerage. RE/MAX sent the Broker a letter requesting that she cease and desist using the Brokerage’s mark because it was confusingly similar to RE/MAX’s marks. Eventually, RE/MAX filed a lawsuit against the Brokerage, the Broker, and the Owner, alleging that the Brokerage’s mark infringed upon RE/MAX’s marks under both federal and state law, and sought to have the Brokerage’s mark cancelled. The Brokerage filed a counterclaim, seeking cancellation of RE/MAX’s marks. RE/MAX filed a motion seeking judgment in its favor.
The United States District Court for the Southern District of Texas ruled that the Brokerage’s mark could cause confusion among the public and so the court ordered the Brokerage’s mark cancelled. RE/MAX argued that the Brokerage’s mark was likely to cause confusion among the public because: first, the color scheme of the Brokerage’s mark was identical to RE/MAX’s marks; second, the companies offer identical services and promote their services in similar ways; and the companies compete for the same customers and there was confusion between the marks found in a survey of the public conducted by the Brokerage. The Brokerage argued that the marks were sufficiently different so as not to cause confusion.
To prove infringement, RE/MAX must show a legally protectable mark and the likelihood of confusion. “Likelihood of confusion” is assessed by courts using the following criteria: (1) strength of the mark; (2) similarity of design between the marks; (3) similarity of the products; (4) identity of purchasers; (5) similarity of advertising mediums used; (6) alleged infringing party’s intent; (7) actual confusion; and (8) degree of care exercised by potential purchasers.
The court determined that RE/MAX had demonstrated infringement by the Brokerage. RE/MAX had a legally protectable mark and so the court looked at the “likelihood of confusion” factors. The court found that the RE/MAX marks had strong recognition for the services connected with them, raising the likelihood for confusion. The court also found that the uses of the mark by the Brokerage and RE/MAX in signs and other similar materials could possibly cause confusion among the public.
The court also stated that circumstantial evidence indicated that the Brokerage intended to have its materials resemble RE/MAX’s, such as an invoice stating that the Owner requested ten signs with a “[w]hite background w/ R/M red and blue”. Additionally, RE/MAX had commissioned a survey by a professor of marketing which had found evidence of actual confusion among the public between RE/MAX and the Brokerage. Based on all of the factors, the court determined that there was the likelihood of confusion between the two marks. Therefore, the court ruled in RE/MAX’s favor and ordered cancellation of the Brokerage’s mark.
RE/MAX Int’l, Inc. v. Trend Setter, LLC, 655 F.Supp.2d 679 (S.D. Tex. 2009)