Powers Pyles Sutter & Verville PC

Trademark Trial and Appeal Board

Aug 4, 2010

No. 77641462 (T.T.A.B. Aug. 4, 2010)

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
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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.

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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
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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
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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
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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);
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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
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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.