Powers Pyles Sutter & Verville PCDownload PDFTrademark Trial and Appeal BoardAug 4, 2010No. 77641462 (T.T.A.B. Aug. 4, 2010) Copy Citation Mailed: August 4, 2010 UNITED STATES PATENT AND TRADEMARK OFFICE ___________ Trademark Trial and Appeal Board ___________ In re Powers Pyles Sutter & Verville PC ___________ Serial No. 77641462 ___________ D. Benson Tesdahl, Esq. for Powers Pyles Sutter & Verville PC. Jill I. Prater, Trademark Examining Attorney, Law Office 117 (Loretta C. Beck, Managing Attorney). ____________ Before Walters, Kuhlke and Ritchie, Administrative Trademark Judges. Opinion by Walters, Administrative Trademark Judge: Powers Pyles Sutter & Verville PC has filed an application to register the mark YOUR TRUSTED ADVISORS on the Principal Register for “providing information in the field of law by means of a global computer network; and legal services,” in International Class 45.1 The examining attorney has issued a final refusal to register under Section 2(d) of the Trademark Act, 15 U.S.C. 1 Serial No. 77641462, filed December 30, 2008, based on an allegation of a bona fide intention to use the mark in commerce. THIS OPINION IS NOT A PRECEDENT OF THE TTAB Serial No. 77641462 2 1052(d), on the ground that applicant’s mark so resembles the standard character mark TRUSTED ADVISORS, previously registered for “legal services,” in International Class 45,”2 that, if used on or in connection with applicant’s goods, it would be likely to cause confusion or mistake or to deceive. The registration includes a disclaimer of ADVISORS apart from the mark as a whole. Applicant has appealed. Both applicant and the examining attorney have filed briefs. We affirm the refusal to register. Our determination under Section 2(d) is based on an analysis of all of the probative facts in evidence that are relevant to the factors bearing on the likelihood of confusion issue. See In re E. I. du Pont de Nemours and Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also Palm Bay Imports, Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d 1689 (Fed. Cir. 2005); In re Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003); and In re Dixie Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). In considering the evidence of record on these factors, we keep in mind that “[t]he fundamental inquiry mandated by Section 2(d) goes to the cumulative effect of differences in 2 Registration No. 3581306, issued February 24, 2007, to Winstead PC. Serial No. 77641462 3 the essential characteristics of the goods and differences in the marks.” Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 1098, 192 USPQ 24, 29 (CCPA 1976); and In re Azteca Restaurant Enterprises, Inc., 50 USPQ2d 1209 (TTAB 1999) and the cases cited therein. The Services Considering, first, the services involved in this case, we note that the question of likelihood of confusion must be determined based on an analysis of the goods or services recited in applicant’s application vis-à-vis the goods or services recited in the registration, rather than what the evidence shows the goods or services actually are. Canadian Imperial Bank v. Wells Fargo Bank, 811 F.2d 1490, 1 USPQ2d 1813, 1815 (Fed. Cir. 1987). See also, Octocom Systems, Inc. v. Houston Computer Services, Inc., 918 F.2d 937, 16 USPQ2d 1783 (Fed. Cir. 1992); and The Chicago Corp. v. North American Chicago Corp., 20 USPQ2d 1715 (TTAB 1991). Because likelihood of confusion must be found if there is likely to be confusion with respect to any item that comes within the identification of goods or services in the application, the examining attorney need show only that at least one of the services recited in the application is related to the services of the cited registration. See Tuxedo Monopoly, Inc. v. General Mills Fun Group, 648 F.2d 1335, 209 USPQ 986, 988 (CCPA 1981). In this case, both the Serial No. 77641462 4 application and the cited registration recite the identical “legal services.” Moreover, the plain meaning of the term “legal services” is quite broad and encompasses applicant’s recited services of “providing information in the field of law by means of a global computer network.” Applicant argues that the services differ because registrant is a Texas law firm specializing in business law; whereas, it is a Washington D.C. law firm specializing in healthcare law for large healthcare providers and in education law for colleges and universities. However, neither applicant’s nor registrant’s recitations of services are limited as described by applicant. Thus, applicant’s argument in this regard is unavailing. Because applicant’s services, as recited, are identical and closely related to registrant’s services, as recited, this du Pont factor weighs in favor of a finding of likelihood of confusion. Channels of Trade/ Purchasers Further, inasmuch as the recitations of services in both the involved application and the cited registration are not limited to any specific channels of trade, we presume that the services would be offered in all ordinary trade channels for these services and to all usual classes of purchasers. See In re Linkvest S.A., 24 USPQ2d 1716 (TTAB Serial No. 77641462 5 1992). In view of the identical and overlapping nature of the recited services, the trade channels are the same. The purchasers of the respective legal services are the general public, which necessarily encompasses both sophisticated consumers of legal services as well as those who have limited experience seeking legal advice. While legal services may be expensive and the consumers of such services may exercise a degree of care in choosing such services, the fact that some consumers are sophisticated or knowledgeable in a particular field does not necessarily mean that they are sophisticated or knowledgeable in the field of trademarks or immune from source confusion. TMEP §1207.01(d)(vii); see In re Decombe, 9 USPQ2d 1812 (TTAB 1988); In re Pellerin Milnor Corp., 221 USPQ 558 (TTAB 1983). These du Pont factors also weigh in favor of a finding of likelihood of confusion. The Marks We turn, next, to a determination of whether applicant’s mark and the registered mark, when viewed in their entireties, are similar in terms of appearance, sound, connotation and commercial impression. The test is not whether the marks can be distinguished when subjected to a side-by-side comparison, but rather whether the marks are sufficiently similar in terms of their overall commercial Serial No. 77641462 6 impressions that confusion as to the source of the goods or services offered under the respective marks is likely to result. H.D. Lee Co. v. Maidenform Inc., 87 USPQ2d 1715 (TTAB 2008). The focus is on the recollection of the average purchaser, who normally retains a general rather than a specific impression of trademarks. See Sealed Air Corp. v. Scott Paper Co., 190 USPQ 106 (TTAB 1975). Furthermore, although the marks at issue must be considered in their entireties, it is well settled that one feature of a mark may be more significant than another, and it is not improper to give more weight to this dominant feature in determining the commercial impression created by the mark. See In re National Data Corp., 753 F.2d 1056, 224 USPQ 749 (Fed. Cir. 1985). Although the marks are not identical, applicant has incorporated registrant’s mark, “TRUSTED ADVISOR,” in its entirety into its mark, “YOUR TRUSTED ADVISORS,” merely adding, as a preface, the modifier “YOUR.” Likelihood of confusion is often found where the entirety of one mark is incorporated within another. See In re Denisi, 225 USPQ 624, 626 (TTAB 1985)(PERRY’S PIZZA for restaurant services specializing in pizza and PERRY’S for restaurant and bar services); Johnson Publishing Co. v. International Development Ltd., 221 USPQ 155, 156 (TTAB 1982)(EBONY for cosmetics and EBONY DRUM for hairdressing and conditioner); Serial No. 77641462 7 and In re South Bend Toy Manufacturing Company, Inc., 218 USPQ 479, 480 (TTAB 1983)(LIL’ LADY BUGGY for toy doll carriages and LITTLE LADY for doll clothing). Moreover, the addition of the word “YOUR” as a preface to applicant’s mark merely modifies the term “TRUSTED ADVISOR” and serves to focus the reader’s attention on that term. When we compare the marks in their entireties we find that on the whole they are similar in appearance, sound, connotation and commercial impression, and that the addition of the modifier “YOUR” to applicant’s mark is not sufficient to distinguish the marks when used on identical and closely related services. Applicant’s argument that third-party marks have been allowed on the register is unavailing. Not only did applicant not submit into the record copies of any such registrations, but the marks to which it referred are pending applications. Pending applications are evidence only of the fact that they have been filed. Moreover, each case must be decided on its merits. Thus, this du Pont factor favors a finding of likelihood of confusion. Conclusion When we consider the record and the relevant likelihood of confusion factors, and all of applicant's arguments relating thereto, including those arguments not specifically Serial No. 77641462 8 addressed herein, we conclude that in view of the substantial similarity in the commercial impressions of applicant’s mark, YOUR TRUSTED ADVISORS, and registrant’s mark, TRUSTED ADVISORS, their contemporaneous use on the same and closely related services involved in this case is likely to cause confusion as to the source or sponsorship of such services. Decision: The refusal under Section 2(d) of the Act is affirmed. Copy with citationCopy as parenthetical citation