Legal Eagle, Inc.v.Mark Allen Davis

Trademark Trial and Appeal Board

Dec 19, 2008

No. 91171681 (T.T.A.B. Dec. 19, 2008)

Mailed:
December 19, 2008

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
______

Legal Eagle, Inc.
v.
Mark Allen Davis
_____

Opposition No. 91171681
to application Serial No. 78684218
filed on August 2, 2005
_____

Natalma M. McKnew of Smith Moore Leatherwood, LLP for Legal
Eagle, Inc.

Mark A. Davis of The Davis Law Office, LLC for Mark Allen
Davis.
______

Before Bucher, Bergsman and Wellington, Administrative
Trademark Judges.

Opinion by Bergsman, Administrative Trademark Judge:

Mark Allen Davis (“applicant”) filed a use-based
application for the mark “When you need a legal eagle, call
a bald eagle.”, in standard character form, for “legal
services,” in Class 42.
Legal Eagle, Inc. (“opposer”) filed a notice of
opposition against the registration of applicant’s mark on
the ground of priority of use and likelihood of confusion
pursuant to Section 2(d) of the Trademark Act of 1946, 15
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Opposition Nos. 91171681
2
U.S.C. §1052(d). Specifically, opposer alleged that it is
the owner of seven federally-registered “Legal Eagle” marks
including LEGAL EAGLE, in typed drawing form, for, inter
alia, paralegal services1 and legal support services, namely
photocopying and clerical services,2 and that applicant’s
mark is likely to cause confusion with opposer’s marks.
Applicant denied the salient allegations in the notice
of opposition, and filed a counterclaim to cancel opposer’s
pleaded registration for the mark LEGAL EAGLE for paralegal
services. As ground for cancellation, applicant claimed
that the term LEGAL EAGLE is generic for paralegal services.
Opposer denied the essential allegations in applicant’s
counterclaim to cancel opposer’s registration.
The Record
By rule, the record includes applicant’s application
file, the file for the registration sought to be canceled,
and the pleadings. Trademark Rule 2.122(b), 37 CFR
§2.122(b). In addition, opposer introduced the following
testimony and evidence:
1. The testimony deposition of Richard C. Carnahan,
Jr., the controlling shareholder of opposer, with attached
exhibits; and,

1 Registration No. 2,366,023, issued July 11, 2000; affidavits
under Sections 8 and 15 accepted and acknowledged.

2 Registration No. 1978249, issued June 4, 1996; affidavits under
Sections 8 and 15 accepted and acknowledged; renewed.
Opposition Nos. 91171681
3
2. A notice of reliance on applicant’s responses to
opposer’s interrogatory Nos. 1-17 and applicant’s
supplemental responses to opposer’s interrogatory Nos. 11
and 17.
Opposer also filed a notice of reliance on copies of
its pleaded registrations “together with status information
through March 12, 2008.” However, no documents were
attached. Nevertheless, opposer’s pleaded registrations
have been made of record to the extent that they have been
properly identified and introduced during Mr. Carnahan’s
testimony. See the discussion on standing below.
Applicant did not introduce any testimony or evidence
during his testimony period. However, applicant attached
three (3) exhibits to his brief. The exhibits were not
timely filed, nor were they filed pursuant to a notice of
reliance. Therefore, they were not filed in compliance with
the Trademark Rules of Practice, and, with the exception of
the dictionary definition of the term “legal eagle,”3 they
have not been given any consideration. Trademark Rule
2.123(l), 37 CFR §2.123(l) (“Evidence not obtained and filed
in compliance with these sections will not be considered”).
See also TBMP §704.05(b) (2nd ed. rev. 2004) (“Exhibits and

3 We may take judicial notice of dictionary definitions. See
Hard Rock Café Licensing Corp. v. Elsea, 48 USPQ2d 1400, 1405
(TTAB 1998) (dictionary definitions attached to applicant’s brief
were the proper subject of judicial notice).
Opposition Nos. 91171681
4
other evidentiary materials attached to a party’s brief on
the case can be given no consideration unless they were
properly made of record during the time for taking
testimony”).
Counterclaim
A. Standing.
Applicant’s position as the defendant in the opposition
gives it a personal stake in the outcome of the proceeding,
and therefore it has standing to file a counterclaim seeking
to cancel opposer’s pleaded registration. Space Base Inc.
v. Stadis Corp., 17 USPQ2d 1216, 1220 (TTAB 1990); Alberto-
Culver Co., v F.D.C. Wholesale Corp., 16 USPQ2d 1597, 1603
(TTAB 1990); General Mills, Inc. v. Nature’s Way Products,
Inc., 202 USPQ 840, 841 (TTAB 1979).
B. Whether LEGAL EAGLE is generic for paralegal services?
The registration of opposer’s mark on the Principal
Register is prima facie evidence of the validity of that
registration and that the mark identified in the
registration is not generic. Accordingly, applicant has the
burden of proving that opposer’s registration is invalid
because its mark is generic. Stocker v. General Conference
Corp., 39 USPQ2d 1385, 1392 (TTAB 1996) (“the burden of
proof rests squarely on petitioners who are asserting
invalidity”).
Opposition Nos. 91171681
5
There is a two-part test used to determine whether a
designation is generic: (1) What is the class of goods or
services at issue? and (2) Does the relevant public
understand the designation primarily to refer to that class
of goods or services? H. Marvin Ginn Corp. v. International
Association of Fire Chiefs, Inc., 782 F.2d 987, 990, 228
USPQ 528, 530 (Fed. Cir. 1986). The test turns upon the
primary significance that the term has with the relevant
public. Evidence of the relevant public’s understanding of
a term may be obtained from any competent source, including
direct testimony of consumers, consumer surveys, newspapers,
magazines, dictionaries, catalogs and other publications.
Stocker v. General Conference Corp., 39 USPQ2d at 1392.
Our primary reviewing court has stated that a party
asserting genericness must prove its claim by a
preponderance of the evidence. Therefore, applicant has the
dual burden of overcoming the registration’s validity and he
must also prove by a preponderance of the evidence that the
term LEGAL EAGLE is used or understood by the relevant class
of consumers primarily to refer to the class of services
with which the term is registered (i.e., paralegal
services). Stocker v. General Conference Corp., 39 USPQ2d
at 1392.
The only admissible evidence applicant introduced into
the record was a dictionary definition for the term “legal
Opposition Nos. 91171681
6
eagle.” It is defined as a disparaging term to identify a
lawyer.4 Accordingly, applicant argues that “[a]s a matter
of law, the term ‘legal eagle’ refers to an attorney just as
the words ‘lawyer’ and ‘barrister’ refer to an attorney.
Even our learned judges have used the term ‘legal eagle’ to
refer to a lawyer.”5 Applicant specifically asserts that
the term “‘legal eagle’ is a generic term for an attorney.”6
However, opposer’s registration for LEGAL EAGLE is not for
attorney or legal services; it is registered for paralegal
services. Indeed, Mr. Carnahan testified that opposer is
not rendering legal services; rather it is rendering
paralegal services and other legal support services.7
Opposer’s one dictionary definition is clearly insufficient
to establish the genus or class of opposer’s services or
that the public understands the mark LEGAL EAGLE to refer to
paralegal services. Accordingly, opposer has not met its
burden of proving that LEGAL EAGLE is generic for opposer’s
paralegal services.
In view of the foregoing, the counterclaim to cancel
opposer’s pleaded registration is dismissed.

4 Dictionary.com Unabridged (v 1.01) derived from the Random
House Unabridged Dictionary (2006).
5 Applicant’s Brief, p. 3.
6 Applicant’s Brief, p. 4.
7 Carnahan Dep., pp. 6-7.
Opposition Nos. 91171681
7
Likelihood of Confusion
A. Opposer’s Standing and Priority
Mr. Carnahan testified that since December 1994,
opposer has been using the mark LEGAL EAGLE to identify
paralegal services and technical support services for
attorneys such as duplication services, imaging and indexing
services, and document numbering.8 This testimony is
sufficient to establish opposer’s personal interest in the
outcome of the proceeding and opposer’s priority of use.
See National Bank Book Co. v. Leather Crafted Products,
Inc., 218 USPQ 826, 828 (TTAB 1993) (oral testimony may be
sufficient to prove the first use of a party’s mark when it
is based on personal knowledge, it is clear and convincing,
and it has not be contradicted); Liqwacon Corp. v. Browning-
Ferris Industries, Inc., 203 USPQ 305, 316 (TTAB 1979) (oral
testimony may be sufficient to establish both prior use and
continuous use when the testimony is proffered by a witness
with knowledge of the facts and the testimony is clear,
convincing, consistent, and sufficiently circumstantial to
convince the Board of its probative value); GAF Corp. v.
Anatox Analytical Services, Inc., 192 USPQ 576, 577 (TTAB
1976) (oral testimony may establish prior use when the
testimony is clear, consistent, convincing, and
uncontradicted).

8 Carnahan Dep., pp. 6-7.
Opposition Nos. 91171681
8
Moreover, Mr. Carnahan identified copies of opposer’s
pleaded registrations and testified that the registrations
were subsisting and owned by opposer.9 Because opposer
properly made its pleaded registrations of record, opposer
has established its standing. Cunningham v. Laser Golf
Corp., 222 F.3d 943, 55 USPQ2d 1842, 1844 (Fed. Cir. 2000);
Lipton Industries, Inc. v. Ralston Purina Co., 670 F.2d
1024, 213 USPQ 185, 189 (CCPA 1982). In addition, because
opposer’s pleaded registration are of record, Section 2(d)
priority is not an issue in this case as to the marks and
the services covered by the registrations. King Candy Co.
v. Eunice King’s Kitchen, Inc., 496 F.2d 1400, 182 USPQ 108
(CCPA 1974).
B. Likelihood of confusion analysis.
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 issue of likelihood
of confusion. In re E. I. du Pont de Nemours & Co., 476
F.2d 1357, 177 USPQ 563, 567 (CCPA 1973). See also, In re
Majestic Distilling Company, Inc., 315 F.3d 1311, 65 USPQ2d
1201, 1203 (Fed. Cir. 2003). In any likelihood of confusion
analysis, two key considerations are the similarities
between the marks and the similarities between the services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d

9 Carnahan Dep., pp. 13-18 and Exhibits 4-10.
Opposition Nos. 91171681
9
1098, 192 USPQ 24, 29 (CCPA 1976) (“The 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”).
1. The similarity or dissimilarity and nature of the
services at issue.

Opposer has registered LEGAL EAGLE, in typed drawing
form, for paralegal services and for legal support services,
namely photocopying and clerical services. Applicant is
seeking to register his mark for legal services. Opposer
argues that applicant’s legal services encompass opposer’s
paralegal and legal support services.10 On the other hand,
applicant argues that opposer does not provide legal
services to the public; rather it markets its legal support
services to attorneys.11
There is no evidence in this record regarding the
relationship between legal services, on the one hand, and
paralegal services and legal support services, on the other.
However, it is well settled that applicant’s services and
registrant’s services do not have to be identical or
directly competitive to support a finding that there is a
likelihood of confusion. It is sufficient if the respective
services are related in some manner and/or that the
conditions surrounding their marketing are such that they

10 Opposer’s Brief, p. 8; Opposer’s Reply, p. 2.
11 Applicant’s Brief, pp. 2 and 7.
Opposition Nos. 91171681
10
would be encountered by the same persons under circumstances
that could, because of the similarity of the marks used in
connection therewith, give rise to the mistaken belief that
they emanate from or are associated with a single source.
In re Albert Trostel & Sons Co., 29 USPQ2d 1783, 1785 (TTAB
1993); In re International Telephone & Telegraph Corp., 197
USPQ 910, 911 (TTAB 1978).
“In determining whether products are identical or
similar, the inquiry should be whether they appeal to the
same market, not whether they resemble each other physically
or whether a word can be found to describe the goods of the
parties.” Harvey Hubbell Inc. v. Tokyo Seimitsu Co., Ltd.,
188 USPQ 517, 520 (TTAB 1975). Mr. Carnahan testified that
opposer renders its paralegal and legal support services to
attorneys and corporate legal departments.12 Moreover, it
is common knowledge that attorneys and paralegals work
together in rendering legal services, and that they also
render their services to other attorneys and corporate legal
departments. Accordingly, the services of the parties
appeal to the same market. In view of the foregoing, we
find that the services of the parties are related.

12 Carnahan Dep., pp. 10, 36-37, 57, 63 and Exhibit 18.
Opposition Nos. 91171681
11
2. The similarity or dissimilarity of likely-to-
continue trade channels and classes of consumers.

As indicated above, opposer renders its paralegal and
legal support services to attorneys and corporate legal
departments.13 Applicant argues that “[l]egal services
include personal injury, criminal defense, and business
incorporation, among others.”14 As indicated above, both
parties could render their services to attorneys and
corporate legal departments. Moreover, because the
description of services in neither opposer’s registrations,
nor applicant’s application, contain any restrictions or
limitations as to channels of trade or classes of consumers,
we must presume that the services move in all channels of
trade normal for those services, and that the services are
available to all classes of purchasers for the listed
services. See In re Linkvest S.A., 24 USPQ2d 1716, 1716
(TTAB 1992). See also Hewlett-Packard Co. v. Packard Press
Inc., 281 F.3d 1261, 62 USPQ2d 1001, 1004 (Fed. Cir. 2002);
Octocom Systems, Inc. v. Houston Computers Services Inc.,
918 F.2d 937, 16 USPQ2d 1783, 1787 (Fed. Cir. 1990).
In view of the foregoing, we find that the parties
render their services in the same channels of trade and to
the same classes of consumers.

13 Carnahan Dep., pp. 10, 36-37, 57, 63 and Exhibit 18.
14 Opposer’s Brief, p. 7.
Opposition Nos. 91171681
12
3. The similarity of the marks in their entireties in
terms of appearance, sound, meaning, and
connotation.

We now turn to the du Pont likelihood of confusion
factor focusing on the similarity or dissimilarity of the
marks in their entireties as to appearance, sound,
connotation and commercial impression. In re E. I. du Pont
de Nemours & Co., 177 USPQ at 567. In a particular case,
any one of these means of comparison may be critical in
finding the marks to be similar. In re White Swan Ltd., 9
USPQ2d 1534, 1535 (TTAB 1988); In re Lamson Oil Co., 6
USPQ2d 1041, 1042 (TTAB 1988). In addition, in comparing
the marks, we are mindful that 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 impression so
that confusion as to the source of the goods offered under
the respective marks is likely to result. San Fernando
Electric Mfg. Co. v. JFD Electronics Components Corp., 565
F.2d 683, 196 USPQ 1, 3 (CCPA 1977); Spoons Restaurants Inc.
v. Morrison Inc., 23 USPQ 1735, 1741 (TTAB 1991), aff’d
unpublished, No. 92-1086 (Fed. Cir. June 5, 1992). The
proper focus is on the recollection of the average customer,
who retains a general rather than specific impression of the
marks. Winnebago Industries, Inc. v. Oliver & Winston,
Opposition Nos. 91171681
13
Inc., 207 USPQ 335, 344 (TTAB 1980); Sealed Air Corp. v.
Scott Paper Co., 190 USPQ 106, 108 (TTAB 1975).
The marks of the parties are similar to the extent that
applicant’s mark incorporates the entirety of opposer’s
LEGAL EAGLE mark. On the other hand, they are different
because applicant’s mark is a slogan incorporating opposer’s
mark. The term “Legal Eagle” as used by both parties means
substantially the same thing and engenders a similar
commercial impression. In applicant’s case, it connotes a
legal mind with an attention to details, and in opposer’s
case it connotes a good attorney or legal mind.15 As such
the term “Legal Eagle” is suggestive when used in connection
with legal services, paralegal services or legal support
services. In reaching this conclusion, we note that with
the exception of the one dictionary definition, applicant
failed to introduce any testimony or evidence regarding the
meaning or use of the term “Legal Eagle” as a recognized
term or colloquialism for legal services. We have very
little basis on this record to find that applicant’s use of
the term “Legal Eagle” as part of its slogan “When you need
a legal eagle, call a bald eagle.” creates a readily
distinguishable connotation or commercial impression. Thus,

15 We readily admit that we do not understand why applicant’s
dictionary definition indicates that the term “legal eagle” is
often used as a disparaging term for attorneys. Moreover, if it
is, in fact, a disparaging term, why are opposer and applicant
being fighting over it?
Opposition Nos. 91171681
14
in comparing the marks, the term “Legal Eagle” is
sufficiently distinctive to create a memorable commercial
impression which is likely to create an associative reaction
in the minds of consumers familiar with opposer’s mark upon
encountering applicant’s slogan incorporating opposer’s
mark. Accordingly, we find that the similarity of the marks
outweigh their differences, and that the marks are similar
in terms of their appearance, sound, meaning and commercial
impression.
F. Balancing the factors.
Because of the similarity of the marks, the similarity
of the services, and the presumption that the services move
in the same channels of trade and are sold to the same
classes of consumers, we find that applicant’s mark “When
you need a legal eagle, call a bald eagle.” for legal
services is likely to cause confusion with opposer’s LEGAL
EAGLE mark for paralegal service and legal support services.
To the extent that we have any doubts regarding the
likelihood of confusion, we resolve them, as we must, in
opposer's favor. Giant Food, Inc. v. Nation’s Foodservice,
Inc., 710 F.2d 1565, 218 USPQ 390, 395 (Fed. Cir. 1983);
Carlisle Chemical Works v. Hardman & Holden Ltd., 434 F.2d
1403, 168 USPQ 111, 112 (CCPA 1970).
Opposition Nos. 91171681
15
Decision: The counterclaim to cancel opposer’s
pleaded registration is dismissed.
The opposition is sustained and registration to
applicant is refused.