Team Law, Inc.v.Stephen A. Spinelli

Trademark Trial and Appeal Board

Jan 4, 2001

No. 92027366 (T.T.A.B. Jan. 4, 2001)

1/4/01 Paper No. 38
BAC
UNITED STATES PATENT AND TRADEMARK OFFICE
_____
Trademark Trial and Appeal Board
_____
Team Law, Inc.
v.
Stephen A. Spinelli
_____
Cancellation No. 27,366
_____
Charles P. Kennedy of Lerner, David, Littenberg, Krumholz &
Mentlik, LLP for Team Law, Inc.
Stephen A. Spinelli, Esq., pro se1
_____
Before Simms, Chapman and Bottorff, Administrative Trademark
Judges.
Opinion by Chapman, Administrative Trademark Judge:
On February 5, 1998 Team Law, Inc. (a New Jersey
corporation) filed a petition to cancel Registration No.
1,896,599 on the Principal Register, owned by Stephen A.
Spinelli (a lawyer whose office is in Brooklyn, New York),
for the mark 1-800-LAW TEAM for “legal services, and
promoting public awareness of the need for legal services.”2
1 Respondent, who is an attorney, is appearing pro se in this
matter. The Board notes that occasionally papers filed on
respondent’s behalf were signed by “Vesna Antovic, Esq.” listing
the same address as that of respondent.
2 Registration No. 1,896,599, issued May 30, 1995. The claimed
date of first use is November 5, 1990.
THIS DISPOSITION
IS NOT CITABLE AS PRECEDENT
OF THE T.T.A.B.
Cancellation No. 27366
2
As grounds for cancellation petitioner alleges that
since at least as early as October 1987 petitioner, through
its predecessor, has used the marks TEAM-LAW and 1-800-TEAM-
LAW as trade names and as service marks in connection with
legal services; that, through assignment, petitioner owns
Registration No. 1,981,924 for the mark TEAM-LAW LAWYERS FOR
THE SERIOUSLY INJURED for legal services3; that petitioner
owns application Serial No. 74/529,8754 for the mark TEAM-
LAW for legal services, and the Trademark Examining Attorney
has refused registration to petitioner based on respondent’s
registration; that respondent’s mark, when used in
connection with his services, so resembles petitioner’s
previously used marks and trade names, as well as its
registered mark, as to be likely to cause confusion, mistake
or deception; and that from the date of issuance of the
registration of the mark 1-800-LAW TEAM, and continuing to
the present, respondent has not used his mark and has
abandoned his rights thereto.
Respondent, in his answer, denies the salient
allegations of the petition to cancel.
The record consists of the pleadings; the file of the
involved registration; the testimony, with exhibits, of
3 Registration No. 1,981,924, issued June 25, 1996. The words
“lawyers for the seriously injured” are disclaimed. The claimed
date of first use is 1991.
4 The records of this Office indicate that action on petitioner’s
pending application has been suspended in Law Office 103.
Cancellation No. 27366
3
Kenneth S. Oleckna, Esq., one of five equal shareholders in
petitioner corporation5; and petitioner’s two notices of
reliance. Respondent offered no evidence or testimony.
Both parties filed briefs on the case.6 An oral
hearing was requested, but, after an oral hearing was
scheduled, both respondent and petitioner advised the Board
that they would not attend. Thus, no oral hearing was held
in this case.
The record shows that petitioner’s predecessor, the law
firm of Ravich, Koster, Tobin, Oleckna, Reitman & Greenstein
(hereinafter the Ravich law firm) first used the marks 1-
800-TEAM-LAW and TEAM-LAW in about 1985, and first used
TEAM-LAW LAWYERS FOR THE SERIOUSLY INJURED in 1987, all for
legal services. Petitioner corporation, Team Law, Inc., was
formed in 1995 by five equal shareholders, and the Ravich
law firm assigned its rights to the marks TEAM-LAW, 1-800-
TEAM-LAW and TEAM-LAW LAWYERS FOR THE SERIOUSLY INJURED to
petitioner for the purpose of having petitioner corporation
license the marks to various law firms. Under a license,
the Ravich law firm has continued using and advertising the
TEAM-LAW marks.
5 Respondent did not attend Mr. Oleckna’s testimony deposition.
6 Factual statements made in briefs on the case can be given no
consideration unless they are supported by evidence properly
introduced at trial. See BL Cars Ltd. v. Puma Industria de
Veiculos S/A, 221 USPQ 1018 (TTAB 1983); and Abbott Laboratories
v. TAC Industries, Inc., 217 USPQ 819 (TTAB 1981). See also,
TBMP §706.02.
Cancellation No. 27366
4
Petitioner advertises on billboards and buses; in
magazines such as regional East Coast editions of Time,
Newsweek, and Sports Illustrated; in newspapers; in yellow
pages classified ads; and on television and radio. Some
illustrative examples are shown below:
1987 Newspaper Ad 1992 Newspaper Ad
1993 Billboard 1998 Billboard
Cancellation No. 27366
5
1992 Yellow Pages Ad
Petitioner’s advertising costs under these marks for the
years 1987-1997 total approximately $8,500,000.
The information on respondent comes essentially from
the application file which matured into the registration now
the subject of this petition to cancel. Mr. Spinelli offers
legal services from his office in Brooklyn, New York, and
filed his application on August 31, 1993, with specimens
showing “1 (800)LAW TEAM” typed onto his letterhead
stationery.
Petitioner’s current status and title copy of its
pleaded Registration No. 1,981,924 (for the mark TEAM-LAW
LAWYERS FOR THE SERIOUSLY INJURED), submitted under a notice
Cancellation No. 27366
6
of reliance, establishes petitioner’s standing. See
Cunningham v. Laser Golf Corp., 222 F.3d 943, 55 USPQ2d
1842, 1844 (Fed. Cir. 2000); and Lipton Industries, Inc. v.
Ralston Purina Co., 670 F.2d 1024, 213 USPQ 185 (CCPA 1982).
Petitioner (through its predecessor) has clearly
established its prior and continuous use of the common law
service marks TEAM-LAW and 1-800-TEAM-LAW since about 1985,
and of the registered mark TEAM-LAW LAWYERS FOR THE
SERIOUSLY INJURED since 1987. Absent proof of first use,
respondent is only entitled to the filing date of his
application. See Trademark Rule 2.122(b)(2). Petitioner’s
first use of its marks precedes respondent’s filing date in
1993.
Turning to the pleaded ground of likelihood of
confusion, our determination of this issue is based on an
analysis of all the probative facts in evidence that are
relevant to the factors bearing on likelihood of confusion.
See In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177
USPQ 563 (CCPA 1973). The factors deemed pertinent in this
proceeding now before us are discussed below.
The first du Pont factor we consider is the marks.
When considering the involved marks, we must analyze the
similarities/dissimilarities as to sound, appearance,
connotation and commercial impression. We find respondent’s
mark 1-800-LAW TEAM similar to petitioner’s common law marks
Cancellation No. 27366
7
TEAM-LAW and 1-800-TEAM-LAW in all of the relevant
categories. Of course, the commercial impression created by
the marks must be determined in relation to the services in
connection with which the marks are used. Also, the
reversal in one mark of the essential elements of another
mark will avoid a finding of likelihood of confusion only if
the transposed marks create distinctly separate and
different commercial impressions. See In re Wine Society of
America Inc., 12 USPQ2d 1139 (TTAB 1989); In re Nationwide
Industries Inc., 6 USPQ2d 1882 (TTAB 1988); and In re Wm. E.
Wright Co., 185 USPQ 445 (TTAB 1975). The commercial
impression of petitioner’s marks TEAM-LAW and 1-800-TEAM-
LAW, and respondent’s mark 1-800-LAW TEAM are the same.
Specifically, both parties’ marks connote that when you hire
a lawyer, you are getting a team of lawyers to represent
your side. The transposition of the words LAW TEAM and TEAM
LAW simply does not avoid a likelihood of confusion.
Furthermore, the emphasis in determining likelihood of
confusion is not on a side-by-side comparison of the marks,
and the average person is not infallible in his recollection
of marks and may well transpose the two elements of the
marks in his mind, particularly considering memory over a
period of time. See Grandpa Pidgeon’s of Missouri, Inc. v.
Borgsmiller, 477 F.2d 586, 177 USPQ 573 (CCPA 1973); and In
re Mucky Duck Mustard Co., Inc., 6 USPQ2d 1467 (TTAB 1988).
Cancellation No. 27366
8
Next, we consider the similarity/dissimilarity of the
parties’ services and the channels of trade. In this case,
both parties provide “legal services.” Inasmuch as the
respective services are identical, they obviously would be
offered through the same, normal channels of trade to all
the usual purchasers for such services. See In re Smith and
Mehaffey, 31 USPQ2d 1531 (TTAB 1994).
Even if we assume that the purchasers of legal services
exercise at least some degree of care in choosing a
lawyer/law firm, they are still likely to be confused as to
the source of two such services when both are identified by
very similar marks. That is, such purchasers and users are
not immune from confusion as to the origin of the respective
services, especially when sold under very similar marks.
See Weiss Associates Inc. v. HRL Associates Inc., 902 F.2d
1546, 14 USPQ2d 1840 (Fed. Cir. 1990); Aries Systems Corp.
v. World Book Inc., 23 USPQ2d 1742, footnote 17 (TTAB 1992);
and Miles Laboratories Inc. v. Naturally Vitamin Supplements
Inc., 1 USPQ2d 1445, 1451 (TTAB 1986).
On balance, and considering all of the evidence on the
relevant du Pont factors, we find that confusion is likely
between respondent’s registered mark 1-800-LAW TEAM and
petitioner’s common law marks TEAM-LAW and 1-800-TEAM-LAW.7
7 In light of our finding of a likelihood of confusion between
respondent’s mark 1-800-LAW TEAM and petitioner’s common law
marks, TEAM-LAW and 1-800-TEAM-LAW, for identical services, we
Cancellation No. 27366
9
Finally, turning to the issue of abandonment of
respondent’s mark, petitioner bears the burden of proof, and
must establish abandonment by a preponderance of the
evidence. See Cerveceria Centroamericana, S.A. v.
Cerveceria India Inc., 892 F.2d 1021, 13 USPQ2d 1307 (Fed.
Cir. 1989). See also, 3 J. Thomas McCarthy, McCarthy on
Trademarks and Unfair Competition, §20:41 (4th ed. 2000).
Petitioner essentially contends that respondent has not
used his mark since 1993, as evidenced by respondent’s
answers to certain document requests8, and by respondent’s
failure to submit any evidence of use of his mark for six
years.
Petitioner’s document request No. 2 reads as follows:
“All documents which refer or relate to any advertising or
sales for Respondent’s services bearing Respondent’s Mark
since the date of first use”; and respondent answered
“Enclosed are copies of the following documents: [a list of
5 letters on respondent’s letterhead stationery, all dated
in August 1993].”
need not reach the question of likelihood of confusion between
respondent’s mark and petitioner’s registered mark TEAM-LAW
LAWYERS FOR THE SERIOUSLY INJURED.
8 Normally documents produced by the adverse party in response to
a request for production of documents may not be made of record
through a notice of reliance. See TBMP §711. However,
respondent made no objection to petitioner’s notice of reliance
on that basis, thereby waiving such objection. Accordingly, we
have considered petitioner’s notice of reliance on its involved
document requests, and respondent’s answers thereto.
Cancellation No. 27366
10
The problem with petitioner’s position on the issue of
abandonment is that the sparse evidence before us does not
establish abandonment of the mark 1-800-LAW TEAM by
respondent for the services identified in his registration.
Respondent is not obligated to submit evidence of use,
rather, petitioner must establish respondent’s abandonment
of his mark. Petitioner would have us presume that the
documents produced by respondent were all the documents he
possessed regarding the involved mark, but respondent could
have provided representative samples of documents in answer
to petitioner’s involved document request. We cannot make
such presumptions in determining the issue before us.
Petitioner has not established respondent’s abandonment of
the mark for three years.9 Because petitioner did not
establish the statutory prima facie three years non-use,
petitioner must then prove respondent’s intent not to resume
use. There is no evidence of record regarding respondent’s
intent.
Petitioner’s evidence fails to establish respondent’s
abandonment of his mark.
Decision: The petition to cancel is denied on the
ground of abandonment, and it is granted on the ground of
9 If petitioner had established a prima facie showing of non-use
by respondent for three years, then respondent’s intent not to
resume use would have been inferred under Section 45 of the
Trademark Act.
Cancellation No. 27366
11
priority and likelihood of confusion. Accordingly,
Registration No. 1,896,599 will be cancelled in due course.