Rainmaker Marketing, Inc.v.Kane

Trademark Trial and Appeal Board

Jun 10, 1997

OPP (T.T.A.B. Jun. 10, 1997)

THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB June 10, 1997
Paper No. 29
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
______
Rainmaker Marketing, Inc.
v.
Thomas E. Kane
_____
Opposition No. 93,524
to application Serial No. 74/349,564
filed on January 19, 1993
_____
Susan Freya Olive of Olive & Olive, P.A. for Rainmaker
Marketing, Inc.
Karen K. Hammond of Porter, Wright, Morris & Arthur for
Thomas E. Kane.
______
Before Rice, Cissel and Seeherman, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
Thomas E. Kane applied to register the mark shown below
for "legal marketing services," in Class 35.
Opposition No. 93524
2
By subsequent Examiner's amendment, his services were
described as "legal marketing consultation services," and
the classification was changed to Class 42. Also by
Examiner's amendment, the word "GROUP" was disclaimed apart
from the mark as shown. Use of the mark since April 1, 1992
and use in interstate commerce since August 22, 1992 were
claimed in the application as filed.
Following publication of the mark in accordance with
Section 12(a) of the Lanham Act, Rainmaker Marketing, Inc.
timely filed a notice of opposition under Section 13. As
grounds for opposition, opposer alleged that since July 19,
1985, which is long before applicant's claimed date of first
use, opposer has been engaged in interstate commerce under
the marks "RAINMAKER" and "RAINMAKER MARKETING, INC." and
the trade name "RAINMAKER MARKETING, INC."; that the
services with which opposer's name and marks have been used
since that time include marketing and consultation services
for the legal community, and lawyer referral services; and
Opposition No. 93524
3
that applicant's mark, as used in connection with the
services set forth in the application, so resembles
opposer's marks and trade name that confusion is likely.
In answer to the notice of opposition, applicant denied
the salient allegations regarding opposer's use and denied
that confusion is likely. Further, applicant asserted
laches, estoppel and acquiescence as affirmative defenses.
A trial was conducted in accordance with the Trademark
Rules of Practice, and testimony, evidence and briefs were
submitted by the parties. No oral hearing was requested.
The record includes the file of the opposed
application, of course, as well as applicant's responses to
opposer's requests for admissions; applicant's answers to
opposer's interrogatories, some of which are subject to a
confidentiality agreement between the parties; a list1 of
third-party registrations and a third-party application for
marks which purportedly consist of or include the word
"RAINMAKER"; copies of three different publications with
titles which include the term "Rainmaker" or "Rainmaking;"
and the testimony of James O"Herron, opposer's president.
The pleaded affirmative defenses were not mentioned
after the answer was filed, and no evidence relating to them
was introduced, so even if applicant did not intend to

1This list was the subject of a motion to strike, which was
denied by the Board on December 20, 1995. See discussion at
page 10, infra.
Opposition No. 93524
4
withdraw them, he has not established that he is entitled to
relief based on the affirmative defenses he pleaded.
Accordingly, the issues for our resolution in this
proceeding are priority and likelihood of confusion.
The record shows that opposer is a full service
advertising and marketing agency which works exclusively
with legal professionals. Mr. O'Herron's testimony
establishes that opposer provides a wide range of services
to lawyers and law firms, including not just advertising,
but also consulting, training, planning and marketing
services as well. For example, opposer identifies
appropriate marketing activities for its clients, attempting
to help the clients enhance their images and thereby
maximize clients' abilities to get their own clients to hire
them for wider ranges of legal work. Opposer conducts
retreats and marketing seminars, as well as providing one-
on-one consultations with respect to the marketing of legal
services. Opposer conducts market surveys and competitive
analyses for its clients, creates annual marketing plans for
them, and provides a range of media planning services,
including the design and placement of advertisements.
Opposer produces and distributes widely a quarterly
newsletter which both promotes opposer's services and
informs clients and potential clients about issues in legal
marketing and advertising which could be important to them.
Opposer has established its priority with testimony and
evidence that it used its marks and trade name before
Opposition No. 93524
5
applicant used the mark he seeks to register. Mr.
O'Herron's testimony is clear that promotion of opposer's
services under the name "RAINMAKER MARKETING, INC." and the
marks "RAINMAKER MARKETING" and "RAINMAKER" has been
continuous and extensive since July 19, 1985.
Applicant neither claimed nor proved use of the mark he
seeks to register in connection with his services prior to
the 1992 date set forth in the original application, but his
responses to opposer's discovery requests support his claim
of use in 1992.
In view of opposer's clear priority, we turn to the
question of whether confusion is likely. Based on the
record before us, we hold that applicant's mark, as used in
connection with the services set forth in the application,
so resembles opposer's trade name and marks, which opposer
has used in connection with its services, as to be likely to
cause confusion.
At the outset of our discussion of this issue, we must
explain exactly what we consider to be applicant's services.
As noted above, the application as filed identified the
services as "legal marketing services." At the request of
the Examining Attorney, applicant amended it to add the word
"consultation," so the identification clause in the
application thus became "legal marketing consultation
services."
On March 27, 1995, well after the close of opposer's
testimony period and two days before applicant's testimony
Opposition No. 93524
6
period was scheduled to close, applicant filed a request for
remand to the Examining Attorney for consideration of an
amendment, asserting that the proposed amendment narrowed
his identification of services and would avoid any overlap
with the services rendered under opposer's marks. The
proposed amendment would have changed the recitation of
applicant's services in the application to read "education,
training and planning services to law firms regarding the
development and enhancement of client relationships." Both
parties filed briefs on the motion to remand the
application, and applicant filed a reply brief.2
On August 9, 1995, the Board noted that applicant's
request to remand the application to the Examining Attorney
for consideration of the proposed amendment to the
recitation of services was improper, in that the Board,
rather than the Examining Attorney, had the sole discretion
in an opposition proceeding to determine whether to permit
such an amendment. The Board also noted that the proposed
amendment was untimely because it was filed at the end of
applicant's testimony period, rather than prior to trial.
The Board acknowledged that opposer had not objected to the
amendment on the ground that it was untimely, however, and
in fact had argued against the amendment on its merits.

2The Board has exercised its discretion and has considered the
reply brief, but opposer objected to the exhibit applicant
submitted with it. The submission of the exhibit in this manner
does not make it part of the evidentiary record in this
proceeding, but even if we were to consider the exhibit, it
would not alter our ruling.
Opposition No. 93524
7
Accordingly, the request to amend was not denied as
untimely. Instead, as is the normal practice when an
applicant seeks, without the consent of opposer, to avoid a
finding of likelihood of confusion by limiting its
identification of goods or services, the Board deferred the
ruling on the acceptability of the proposed amendment until
final hearing.
Trademark Rule 2.71(b) permits amendment to clarify or
limit the identification of services, but expansions or
additions are not allowed. We deny applicant's request to
amend the identification of his services because the
proposed amendment impermissibly broadens, rather than
narrows, the services as they are presently identified in
the application. Although the proposed amendment is plainly
an attempt by applicant to avoid the appearance of any
overlap between the services rendered under his mark and
those rendered under opposer's mark, (as admitted in his
brief on the motion, p.2), it includes services not
encompassed within the existing language. The references to
"education" and "training," as well as to the "development
and enhancement of client relationships," are outside the
scope of what could reasonably be understood to constitute
"legal marketing consultation services." Training law firm
personnel how to enhance their relationships with clients
may have a positive effect on the level of sales of the
firm's legal services, but it would not be commonly
understood to be encompassed within the term "legal
Opposition No. 93524
8
marketing consultation services." Similarly, while
consulting with law firm personnel may result in their
education, the term "legal marketing consultation services"
would not ordinarily be understood to refer to whatever
education results from such consultation, but rather to the
activities of conferring with people at the firm and
advising them with respect to how to promote the sale of the
services the firm provides.
The record supports applicant's claim that he renders
legal marketing consultation services to law firms. In any
event, our resolution of the issues on appeal would not
change even if the proposed amendment were allowed. As
opposer points out, in addition to consulting with law firms
regarding the marketing of their legal services, opposer
also uses its name and marks in connection with teaching
them how to develop and improve their relationships with
their clients.
Returning, then, to the issue of likelihood of
confusion between applicant's mark, as used in connection
with "legal marketing consultation services," and opposer's
trade name and marks, as used in connection with opposer's
services, as we noted above, confusion is likely because
opposer's trade name and opposer's marks are similar to the
mark applicant seeks to register and the services rendered
by applicant and opposer are in part identical and otherwise
are closely related.
Opposition No. 93524
9
Our primary reviewing court, in the landmark case of In
re E.I. duPont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563
(CCPA 1973), identified the possible factors to which the
evidence in a particular case might relate in determining
whether confusion is likely. The factors most relevant to
the instant case are the similarity of the trade name and
marks in their entireties, the relationship between the
services rendered under the marks, and whether actual
confusion has occurred.
While the trade name and marks in the instant case are
not identical, they are similar when they are considered in
their entireties. Opposer pleaded and proved the use of
"RAINMAKER" alone, as well as with the words "MARKETING" and
"INC."
It is well settled that it is not improper, under
appropriate circumstances, i.e., where a rational basis for
doing so exists, to give more significance to a particular
feature of a mark, provided the ultimate conclusion rests on
consideration of the marks in their entireties. In re
National Data Corp., 753 F.2d 1056, 244 USPQ 749 (Fed. Cir.
1985). Just as opposer's mark "RAINMAKER" is the dominant
component of opposer's mark and trade name, "RAINMAKER
MARKETING, INC.," it is the word "RAINMAKER" which plays the
dominant role in creating the commercial impression of
applicant's mark. The descriptive, and hence disclaimed,
word "GROUP" has no more source-identifying significance
than the "MARKETING, INC." component of opposer's mark and
Opposition No. 93524
10
trade name, "RAINMAKER MARKETING, INC." In applicant's
mark, the graphic representation of what appear to be storm
clouds is less significant than the word "RAINMAKER."
In any event, the cloud design only reiterates or
emphasizes the same suggestion of making rain that the word
itself conveys. "RAINMAKER" is suggestive as used in
connection with these activities because a rainmaker is a
person who brings the rain which is necessary in order to
grow crops. The analogy is that one who brings business to
the firm makes rain. The suggestive term "RAINMAKER" is the
word that clients and prospective clients of the services of
both parties would be most likely to recall and to use when
referring to the services that each renders under these
marks. Applicant's mark, considered as a whole, is
substantially similar in overall commercial impression to
opposer's mark "RAINMAKER" and opposer's mark and trade name
"RAINMAKER MARKETING, INC."
We are not persuaded by applicant's argument that
because of the suggestive nature of the word "RAINMAKER" and
its use by third parties in connection with related
activities, the term is weak in source-identifying
significance. To begin with, the argument that "RAINMAKER"
is weak because of extensive third-party use in marks for
related services is unsupported by evidence. As the Board's
December 20, 1995 action explaining the ruling on the motion
to strike the list of third-party registrations noted,
although the list has not been stricken, its persuasive
Opposition No. 93524
11
value is extremely limited because the registrations
themselves are not of record. Moreover, even if applicant
had properly made the registrations and the application of
record in this case, these materials would not be evidence
that the marks therein are in use, so they could hardly be
persuasive of the proposition that use of marks including or
consisting of the word "RAINMAKER" has been so pervasive
that the consumers of the services in question here look to
other components of such marks in order to distinguish among
them. As we have often reiterated, the existence on the
register of marks which might appear to be likely to cause
confusion cannot aid an applicant in registering yet another
mark which is likely to cause confusion or mistake or to
deceive. In re Mayco Mfg., 192 USPQ 573 (TTAB 1976).
Applicant also argues that other evidence he introduced
of the use of the term "RAINMAKER" shows that opposer's mark
is weak in source-identifying significance. As we noted
above, the term has suggestive significance as used in
connection with the services of the parties to this
proceeding, but the examples provided by applicant in
support of this contention do not show adoption or use of
the word by third parties as trademarks or as service marks
in connection with these kinds of services. The record
supports the conclusion that in the field of marketing legal
services, only applicant and opposer use marks which consist
of or incorporate the term. We thus have no basis for
Opposition No. 93524
12
adopting applicant's argument that the word is weak in terms
of source-identifying significance.
Notwithstanding applicant's contentions to the
contrary, confusion is clearly likely when the similar marks
and name involved in this case are used in connection with
what are essentially the same services, sold to the same
firms through the same channels of trade.
Our finding that confusion is likely is not based on
opposer's allegation that actual confusion has occurred. The
testimony of Mr. O'Herron relating to this issue is not clear
proof that confusion has actually taken place. It is not clear,
for example, what the factual basis was for Mr. O'Herron's
conclusion that the exhibit manager at the North Carolina Bar
Association meeting was confused. The other incident argued to
be proof that confusion has actually taken place concerned a
telephone inquiry from the representative of a legal publication.
It is well settled, however, that making an inquiry may not show
confusion at all. That the exhibit manager inquired as to
whether the marks indicated that the services were provided by a
single source does not conclusively establish that he mistakenly
assumed that they did. Inquiry does not necessarily indicate
confusion. See Pump Inc. v. Collins Management Inc., 15 USPQ
1716 (DC Mass. 1990) and cases cited therein.
Opposer has also asserted that if applicant were actually as
deeply involved in the field of marketing legal services as his
advertising indicates he is, then he surely must have been aware
of opposer's name and marks. The testimony of Mr. O'Herron and
Opposition No. 93524
13
the evidence of record in connection with it concerning the scope
and extent of opposer's advertising and promotion of its business
under its trade name and service marks does show that opposer and
its marks are well known in this field. Opposer argues that in
view of this fact, the Board should infer that applicant acted in
bad faith and copied opposer's mark in an attempt to trade off
opposer's good reputation in this field.
While this argument does make sense in view of the facts of
record here, we do not need to engage in such speculation in
order to hold for opposer. Intent to copy is not a necessary
element in establishing that confusion is likely. Intent could
be a factor if the issue of likelihood of confusion were in
doubt, but we have no doubt on that issue in this case.
In a similar sense, we are not persuaded by applicant's
argument that confusion is not likely in this case because the
purchasers of the services of applicant and opposer are
sophisticated law firm professionals. It is clear from the
record that these services are not inexpensive purchases made
casually by ordinary consumers. Even highly educated and
sophisticated attorneys, however, are not immune from confusion
when the marks are as similar as these marks are and the services
with which they are used are virtually identical. In re General
Electric Company, 180 USPQ 542 (TTAB 1973).
Opposition No. 93524
14
In summary, opposer has established that confusion is likely
in view of the fact that applicant's mark is very similar to the
marks and trade name which opposer has previously used in
connection with services which are substantially the same as the
services set forth in the application. Accordingly, the
opposition is sustained and registration to applicant is refused.
J. E. Rice
R. F. Cissel
E. J. Seeherman
Administrative Trademark Judges
Trademark Trial & Appeal Board