EAG, A Law Corporation

Trademark Trial and Appeal Board

Mar 2, 2005

No. 76515140 (T.T.A.B. Mar. 2, 2005)

Mailed:
2 March 2005

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re EAG, A Law Corporation.
________

Serial No. 76515140
_______

Jon-Erik G. Storm of Employer Advocates Group LC for EAG, A
Law Corporation.

Lourdes D. Ayala, Trademark Examining Attorney, Law Office
106 (Mary Sparrow, Managing Attorney).
_______

Before Chapman, Bottorff, and Drost, Administrative
Trademark Judges.

Opinion by Drost, Administrative Trademark Judge:

On May 19, 2003, EAG, A Law Corporation (applicant)
applied to register the mark shown below on the Principal
Register for “legal services” in Class 42.1 The application
described the mark as “EAG (stylized and/or with design)”
and the attorney’s cover letter identified the subject as
“EAG Logo.”

1 Serial No. 76515140 is based on an allegation of a date of
first use and first use in commerce of February 3, 2002.
THIS DISPOSITION IS
NOT CITABLE AS
PRECEDENT OF THE TTAB
Ser No. 76515140
2

The examining attorney has refused to register applicant’s
mark under Section 2(d) of the Trademark Act (15 U.S.C.
§ 1052(d)) because of a prior registration for the mark
EAG, in typed form, for, inter alia, the following services
in Class 42:2
Litigation support services, namely, litigation claims
evaluation, preparation of demonstrative exhibits and
graphics presentations; expert witness services,
namely, selection and evaluation of experts and expert
testimony.

When the refusal was made final, applicant filed this
appeal.
The examining attorney argues (Brief, fourth,
unnumbered page) that the “literal portions of both marks
are identical in appearance, sound and meaning” and that
litigation support services and legal services “will travel
within the same channels of trade.” The examining attorney
also argues that the special form display of applicant’s
mark will not avoid confusion. Applicant emphasizes the

2 Registration No. 2,315,764, issued February 8, 2000. The
registration also contains goods and services in Classes 9, 16,
35, and 36, which are not at issue in this appeal.
Ser No. 76515140
3
differences in the visual appearance of the marks and it
maintains that the “services are not related.” Brief at 6.
Applicant also argues that the sophistication of the
purchasers is another factor supporting a determination
that there is no likelihood of confusion.
In a case involving a refusal under Section 2(d), we
analyze the facts as they relate to the relevant factors
set out in In re Majestic Distilling Co., 315 F.3d 1311, 65
USPQ2d 1201, 1203 (Fed. Cir. 2003). See also In re E. I.
du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563, 567
(CCPA 1973); and Recot, Inc. v. Becton, 214 F.3d 1322, 54
USPQ2d 1894, 1896 (Fed. Cir. 2000). In considering the
evidence of record on these factors, we must keep in mind
that “[t]he fundamental inquiry mandated by § 2(d) goes to
the cumulative effect of differences in 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).
Obviously, one of the critical factors in any
likelihood of confusion analysis is the similarities and
dissimilarities of the marks in the application and
registration. Here, we agree with the examining attorney
that the literal portion of the marks are identical, EAG.
Furthermore, we note that registrant’s mark is displayed in
Ser No. 76515140
4
typed form, and it is therefore, not limited to any
particular display. See Cunningham v. Laser Golf Corp.,
222 F.3d 943, 55 USPQ2d 1842, 1847-1848 (Fed. Cir. 2000);
and Phillips Petroleum Co. v. C.J. Webb, Inc., 442 F.2d
1376, 170 USPQ 35, 36 (CCPA 1971). “[T]he argument
concerning a difference in type style is not viable where
one party asserts rights in no particular display. By
presenting its mark in a typed drawing, a difference cannot
legally be asserted by that party. Tomy asserts rights in
SQUIRT SQUAD regardless of type styles, proportions, or
other possible variations. Thus, apart from the background
design, the displays must be considered the same.”
Squirtco v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 939
(Fed. Cir. 1983). However, there are limits to this
assumption.
[W]e are not suggesting that because an application or
registration depicts a word mark in typed capital
letters that therefore the word mark must be
considered in all possible forms no matter how
extensively stylized. Rather, we are simply
indicating that when a drawing in an application or
registration depicts a word mark in typed capital
letters, this Board -- in deciding the issue of
likelihood of confusion -- must consider all
reasonable manners in which the word mark could be
depicted.

Jockey International Inc. v. Mallory & Church Corp.,
25 USPQ2d 1233, 1235 (TTAB 1992) (internal quotation marks
omitted).
Ser No. 76515140
5
We agree with applicant (Brief at 6) that its mark is
“highly stylized” and, therefore, we do not agree with the
examining attorney (brief at fifth unnumbered page) that
“registrant is free to adopt any style of lettering,
including lettering identical to that used by applicant.”
While we do agree that registrant may adopt a stylization
of lettering that may be similar to letters in applicant’s
mark, applicant’s display seems so extensively stylized
that we will not assume that it is reasonable for
registrant to adopt the exact stylization of the letters in
applicant’s design mark.
However, while we find that applicant’s mark is highly
stylized, we do not find that this single factor is enough
to hold that the marks are not similar in appearance. We
note that the facts in this case are significantly
different than the case of In re Electrolyte Laboratories
Inc., 913 F.2d 930, 16 USPQ2d 1239 (Fed. Cir. 1990). In
that case, the Federal Circuit held that the marks K+ and
design and K+EFF (stylized) for potassium supplements were
not confusingly similar. Significantly, both the
registrant’s and applicant’s marks were either stylized or
design marks. Neither mark was a typed drawing so both
marks were limited to a specific display, and these
displays were “significantly different.” 16 USPQ2d at
Ser No. 76515140
6
1240. In addition, the underlying letters, K+ and K+EFF,
were not distinctive to the extent that K is the symbol for
potassium, “EFF” is an abbreviation for effervescent, and
the goods were potassium supplements. Unlike the
Electrolyte case, registrant’s mark is a typed drawing and,
therefore, it is not limited to a single, distinctively
different style. Rather we must assume that it may be
displaying somewhat similar letters to applicant’s.
Furthermore, there is no evidence that the underlying
verbal portions, the letters EAG, would have any meaning
that would diminish the distinctiveness of the letters.
When we compare the literal portions of the marks,
they are identical in sound, appearance, and meaning. This
factor weighs against applicant. In re Shell Oil Co., 992
F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993) (“Without
a doubt the word portion of the two marks are identical,
have the same connotation, and give the same commercial
impression. The identity of the words, connotation, and
commercial impression weighs heavily against the
applicant”). However, the key question in this case is
whether the marks as a whole are similar in sound,
appearance, meaning, and commercial impression. If
applicant’s mark would not be perceived as EAG but rather
as a design, confusion is much less likely. Regarding the
Ser No. 76515140
7
letters in applicant’s mark, it is clear that the letter
“G” would be immediately recognized as that letter and the
letter “A” is also recognizable. While the letter “E” is
displayed in an unusual style with the middle horizontal
line lower than would be expected, it is still recognizable
as a letter to the extent that the presence of the letters
“AG” would encourage potential purchasers to expect another
letter.
We also note that applicant’s name is “EAG, A Legal
Corporation,” which reinforces the perception that EAG are
the letters in the mark. In addition, we also consider
applicant’s mark as it appears on the specimens of record.
In re Nationwide Industries, 6 USPQ2d 1882, 1884 (TTAB
1984) (“Thus, it is settled that evidence of the context in
which a mark is used on labels, packaging, advertising,
etc., is probative of the significance which the mark is
likely to project to purchasers”). Applicant’s specimen, a
Yellow Pages advertisement, begins with the heading:
EMPLOYER ADVOCATES GROUP, immediately followed by the EAG
mark. The appearance of the name Employer Advocates Group
followed by the EAG mark would aid potential purchasers to
understand the mark to be initials for the name in the
advertisement. Also, the concluding line of the
advertisement is the website (www.EAGLawGroup.com), with
Ser No. 76515140
8
the letters EAG capitalized. When we view the specimen, it
is clear that applicant’s mark would be understood by
consumers as the letters EAG and the specimen rebuts any
argument to the contrary. Specialty Brands, Inc. v. Coffee
Bean Distributors, Inc., 748 F.2d 669, 223 USPQ 1281, 1284
(CCPA 1984) (“Applicant's labels support rather than negate
that of which opposer complains: that SPICE VALLEY
inherently creates a commercial impression which is
confusingly similar to that of SPICE ISLANDS”); In re
Azteca Restaurant Enterprises Inc., 50 USPQ2d 1209, 1211
(TTAB 1999) (“On applicant's menus, which are the specimens
of record, the words appear on a line below the term AZTECA
and are in smaller type than the term AZTECA. Certainly,
when applicant's mark is viewed as a whole, it is the term
AZTECA which is the dominating and distinguishing element
thereof”). Therefore, when we consider the marks as a
whole, we conclude that they would be pronounced
identically and have the same meaning. In addition, their
similarities in appearance and commercial impression
outweigh the difference in their displays.
Next, we look at the relationship between applicant’s
and registrant’s services. We are not required to find
that the services overlap in order to find that the
services are related. It “has often been said that goods
Ser No. 76515140
9
or services need not be identical or even competitive in
order to support a finding of likelihood of confusion.
Rather, it is enough that goods or services are related in
some manner or that circumstances surrounding their
marketing are such that they would be likely to be seen by
the same persons under circumstances which could give rise,
because of the marks used thereon, to a mistaken belief
that they originate from or are in some way associated with
the same producer or that there is an association between
the producers of each parties' goods or services.” In re
Melville Corp., 18 USPQ2d 1386, 1388 (TTAB 1991). See also
Time Warner Entertainment Co. v. Jones, 65 USPQ2d 1650,
1661 (TTAB 2002).
Applicant’s services are “legal services,” while the
relevant services in the cited registration are
litigation support services, namely, litigation claims
evaluation, preparation of demonstrative exhibits and
graphics presentations; expert witness services,
namely, selection and evaluation of experts and expert
testimony.

We start with the established proposition that we must
consider the services as they are described in the
identification of services in the application and
registration.3 Octocom Systems, Inc. v. Houston Computers

3 In its Brief (p. 3), applicant refers to information on
registrant’s website. To the extent that this information is not
Ser No. 76515140
10
Services Inc., 918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed.
Cir. 1990) (“The authority is legion that the question of
registrability of an applicant’s mark must be decided on
the basis of the identification of goods [or services] set
forth in the application regardless of what the record may
reveal as to the particular nature of an applicant’s goods
[or services], the particular channels of trade or the
class of purchasers to which the sales of goods [or
services] are directed”). See also Paula Payne Products v.
Johnson Publishing Co., 473 F.2d 901, 177 USPQ 76, 77 (CCPA
1973) (“Trademark cases involving the issue of likelihood
of confusion must be decided on the basis of the respective
descriptions of goods” or services). Furthermore, the fact
that the cited registration contains goods and services in
several other classes for software, financial reports, and
businesses investigations cannot be read to limit the scope
of registrant’s litigation support services. Squirtco v.
Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir.
1983)(“There is no specific limitation and nothing in the
inherent nature of Squirtco’s mark or goods that restricts
the usage of SQUIRT for balloons to promotion of soft

otherwise of record, “a mere reference to a website does not make
the information of record.” See In re Planalytics Inc., 70
USPQ2d 1453, 1457 (TTAB 2004).
Ser No. 76515140
11
drinks. The Board, thus, improperly read limitations into
the registration”).
Therefore, the question we address is whether
prospective purchasers may assume that there is some
association or relationship between legal services and
litigation support services including claim evaluation,
preparing exhibits, and expert witness services. While
applicant argues that the “only thing the services provided
by Applicant and Registrant have in common is the accident
of placement in Class 42” (Brief at 5), legal services and
litigation support services have much more in common than
their classification.4 Inasmuch as legal services include
representing clients in litigation, litigation support
services and legal services involving litigation would
occur together. Schieffelin & Co. v. Molson Companies
Ltd., 9 USPQ2d 2069, 2073 (TTAB 1989) (“[M]oreover, since
there are no restrictions with respect to channels of trade
in either applicant's application or opposer's
registrations, we must assume that the respective products
travel in all normal channels of trade for those alcoholic
beverages”).

4 Obviously, the classification of the services is not a factor
in a determination of likelihood of confusion. 15 U.S.C. § 1112
(“The Director may establish a classification of goods and
services, for convenience of Patent and Trademark Office
Ser No. 76515140
12
The examining attorney has included printouts of
several registrations that show that legal services and
litigation support services have been registered under a
common mark by the same entity. See, e.g. Registration No.
2,673,708 (“legal services, namely … general legal work,
and legal consulting services; litigation support services,
namely, the monitoring and handling of claims, claims
quality review and general claims management); No.
2,576,166 (“legal services and litigation support services
in the field of patents, and legal negotiation services
between patent owners and potential infringers”); No.
2,404,297 (“attorney services; legal research; and legal
research services; litigation support services”). These
registrations provide at least some support for the
examining attorney’s argument that applicant’s and
registrant’s services are related. See In re Mucky Duck
Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988) (Although
third-party registrations “are not evidence that the marks
shown therein are in use on a commercial scale or that the
public is familiar with them, [they] may have some
probative value to the extent that they may serve to
suggest that such goods or services are the type which may

administration, but not to limit or extend the applicant’s or
registrant’s rights”).
Ser No. 76515140
13
emanate from a single source”). See also In re Albert
Trostel & Sons Co., 29 USPQ2d 1783, 1786 (TTAB 1993).5
We also disagree with applicant’s argument (Brief at
6, emphasis in original) that “there is no consumer who is
likely to constitute an overlapping class of purchaser for
both marks. Applicant markets its services to those who
seek legal services; on the other hand, Registrant markets
its class 42 services at those who perform legal services,
such as Applicant itself.” We note that applicant’s own
advertising indicates that it “represents employers in all
aspects of labor and employment law” including wrongful
termination, sexual harassment, employment discrimination,
and non-competition. It is not clear why attorneys and law
firms would not be consumers of these employer-related
legal services as well as registrant’s litigation support
services. Also, corporations in need of applicant’s legal
services would also be potential consumers of registrant’s
litigation support services for their in-house litigation
activities.

5 Whether “Registrant is legally capable of providing legal
services” is not the determining factor on the question of
whether applicant’s and registrant’s services are related. Reply
Brief at 5. As indicated above, we do not read limitations into
the identification of services and we must determine these
services without regard to what the individual states require for
the performance of legal services. Furthermore, applicant does
not argue that there is any prohibition for a law firm also
providing registrant’s litigation support services.
Ser No. 76515140
14
Applicant also argues that the purchasers in this case
are sophisticated. While we have considered applicant’s
argument, any sophistication of the purchasers does not
overcome the similarity of the marks and the services. In
re Total Quality Group Inc., 51 USPQ2d 1474, 1477 (TTAB
1999) (“[E]ven careful purchasers are not immune from
source confusion”); In re Hester Industries, Inc., 231 USPQ
881, 883 (TTAB 1986) (“While we do not doubt that these
institutional purchasing agents are for the most part
sophisticated buyers, even sophisticated purchasers are not
immune from confusion as to source where, as here,
substantially identical marks are applied to related
products”). In this case, when different entities use the
identical abbreviation EAG, even with some difference in
stylization, for legal services and litigation support
services, it is difficult to see on what basis even careful
purchasers would not assume that there is no relationship
between the sources of the services.
After analyzing the facts of this case under the
factors set out in Majestic Distilling, we are convinced
that there is a likelihood of confusion. We add that, if
we had any doubts about this conclusion, we must resolve
them in favor of the prior registrant. In re Hyper Shoppes
(Ohio), Inc., 837 F.2d 463, 6 USPQ2d 1025, 1026 (Fed. Cir.
Ser No. 76515140
15
1988); In re Pneumatiques, Caoutchouc Manufacture et
Plastiques Kleber-Colombes, 487 F.2d 918, 179 USPQ 729,
729-30 (CCPA 1973).
Decision: The examining attorney’s refusal to
register under Section 2(d) of the Trademark Act is
affirmed.