Vetus Legal LLC

Trademark Trial and Appeal Board

Feb 3, 2021

87888225 (T.T.A.B. Feb. 3, 2021)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Mailed: February 3, 2021

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re Vetus Legal LLC
_____

Serial No. 87888225
_____

Travis J. Jacobs of The Jacobs Law, LLC,
for Vetus Legal LLC.
Marynelle W. Wilson, Trademark Examining Attorney, Law Office 113,
Myriah Habeeb, Managing Attorney.
_____

Before Wellington, Hudis and Lebow,
Administrative Trademark Judges.

Opinion by Lebow, Administrative Trademark Judge:
Applicant, Vetus Legal LLC, applied to register the mark VETUS LEGAL in
standard characters (“LEGAL” disclaimed) on the Principal Register for “Legal
services; Legal services, namely, providing customized documentation, information,
counseling, advice and consultation services in all areas of Veterans Benefits;
Attorney services, namely, representation of clients in Veterans Benefits matters” in
International Class 45.1

1 Application Serial No. 87888225 was filed on April 23, 2018 based on Applicant’s allegation
of first use anywhere and in commerce of December 20, 2017 under Section 1(a) of the
Serial No. 87888225
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The Trademark Examining Attorney refused registration under Section 2(d) of the
Trademark Act, 15 U.S.C. § 1052(d), on the ground that Applicant’s mark, when used
in connection with the recited services, so resembles the registered mark PRO
VETUS, in standard characters (“PRO” disclaimed) on the Principal Register, for
“Conducting workshops and seminars in transitioning veterans and separating
service members to civilian life” (“the Registration”)2 in International in Class 41, as
to be likely to cause confusion.
When the refusal was made final, Applicant appealed to this Board and requested
reconsideration. After the Examining Attorney denied Applicant’s request for
reconsideration, the appeal was resumed. The appeal is fully briefed.
We affirm the refusal.
I. Applicable Law
The fundamental purpose of Trademark Act Section 2(d) is to prevent confusion
as to source of goods or services, and to protect registrants from damage caused by
registration of confusingly similar marks. Park ’N Fly, Inc. v. Dollar Park & Fly, Inc.,
469 U.S. 189, 224 USPQ 327, 331 (1985). Our analysis is based on all of the probative
evidence of record. In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1973) (“DuPont”). In making our determination, we consider each
DuPont factor for which there is evidence and argument. See In re Guild Mortg. Co.,
912 F.3d 1376, 129 USPQ2d 1160, 1162-63 (Fed. Cir. 2019). Varying weights may be

Trademark Act, 15 U.S.C. § 1051(a).
2 Registration No. 5346745, registered November 28, 2017.
Serial No. 87888225
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assigned to each DuPont factor depending on the evidence presented. See Citigroup
Inc. v. Capital City Bank Grp. Inc., 637 F.3d 1344, 98 USPQ2d 1253, 1261 (Fed. Cir.
2011); In re Shell Oil Co., 992 F.2d 1204, 26 USPQ2d 1687, 1688 (Fed. Cir. 1993)
(“[T]he various evidentiary factors may play more or less weighty roles in any
particular determination”).
In any likelihood of confusion analysis, two key considerations are the similarities
between the marks and the similarities between the goods and services. See In re
Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945-46 (Fed. Cir. 2004);
Federated Foods, Inc. v. Fort Howard Paper Co., 544 F.2d 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.”).
A. Similarity or Dissimilarity of the Marks

We begin with the first DuPont factor, which requires us to determine the
similarity or dissimilarity of the marks when viewed in their entireties in terms of
appearance, sound, connotation and overall commercial impression. Palm Bay Imps.
Inc. v. Veuve Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73 USPQ2d
1689, 1691 (Fed. Cir. 2005). “Similarity in any one of these elements may be sufficient
to find the marks confusingly similar.” In re Inn at St. John’s, LLC, 126 USPQ2d
1742, 1746 (TTAB 2018), aff’d mem., 777 Fed. Appx. 516 (Fed. Cir. 2019) (quoting In
re Davia, 110 USPQ2d 1810, 1812 (TTAB 2014)).
Serial No. 87888225
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The test is not whether the marks can be distinguished in a side-by-side
comparison, but rather whether their overall commercial impressions are so similar
that confusion as to the source of the goods offered under the respective marks is
likely to result. See Cai v. Diamond Hong, Inc., 901 F.3d 1367, 127 USPQ2d 1797,
1801 (Fed. Cir. 2018) (citing Coach Servs. v. Triumph Learning LLC, 668 F.3d 1356,
101 USPQ2d 1713, 1721 (Fed. Cir. 2012)). Our focus is on the recollection of the
average purchaser, who normally retains a general rather than a specific impression
of trademarks. See Neutrogena Corp. v. Bristol-Myers Co., 410 F.2d 1391, 161 USPQ
687, 688 (CCPA 1969) (many consumers “may have but dim recollections from having
previously seen or heard one or the other of the involved marks.”); Inter IKEA Sys.
B.V. v. Akea, LLC, 110 USPQ2d 1734, 1740 (TTAB 2014).
1. The Examining Attorney’s Argument
The Examining Attorney contends that “Applicant’s mark, VETUS LEGAL, is
similar to registrant’s mark, PRO VETUS, in appearance, sound, connotation, and
commercial impression” because both marks “include the term VETUS, which is a
Latin term that connotes veterans.”3 She requests that the Board take judicial notice
of an online Latin dictionary definition of VETUS to support this contention, which
shows it to mean “‘old,’ and, in reference to soldiers, ‘veteran, experienced.’”4
Inasmuch as Applicant has not objected to this request, and the Examining Attorney
provided a copy of the definition from Charlton T. Lewis et al., A Latin Dictionary

3 13 TTABVUE 5-6 (Examining Attorney’s Brief).
4 Id. at 6.
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(from http://www.perseus.tufs.edu) with her brief, we take judicial notice of the
provided definition.5
The Examining Attorney argues that VETUS in the marks is “most dominant and
significant in creating the overall commercial impression of the marks because the
additional wording in [both] marks has been disclaimed.”6 Citing to a dictionary
definition of PRO as an informal term for “professional” and “an expert in a field of
endeavor,” she asserts that “PRO in the registered mark has been disclaimed because
it describes a feature of registrant’s services, namely that they are services rendered
by professionals or experts.”7 Similarly, citing to a dictionary definition of LEGAL
being “of, relating to, or concerned with law,” she asserts that “LEGAL in the
applicant’s mark has been disclaimed because it indicates the nature of applicant’s
services” and “plays little source-indicating function in this mark.”8 She concludes
that “[t]he only source-indicating term in the marks is VETUS, and it is the more
dominant element of the marks.”9

5 The Board may take judicial notice of dictionary definitions from online sources when the
definitions themselves are derived from dictionaries that exist in printed form or have regular
fixed editions. See In re White Jasmine LLC, 106 USPQ2d 1385, 1392 n.23 (TTAB 2013); In
re Red Bull GmbH, 78 USPQ2d 1375, 1378 (TTAB 2006).
6 13 TTABVUE 7 (Examining Attorney’s Brief). A disclaimer is a concession that the
disclaimed term is at least descriptive of the identified services. See Quaker State Oil Refining
Corp. v. Quaker Oil Corp., 453 F.2d 1296, 59 C.C.P.A. 764, 172 USPQ 361, 363 (CCPA 1972);
Plus Prods. v. Star-Kist Foods, Inc., 220 USPQ 541, 543 (TTAB 1983).
7 Id. (dictionary definition provided with the October 9, 2019 Reconsideration Letter, TSDR
57).
8 Id. (dictionary definition, TSDR 59).
9 Id.
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2. Applicant’s Argument
Applicant does not dispute that VETUS is dominant in the marks, but asserts that
the marks are different in appearance because they each begin and end with different
words.” According to Applicant, “the placement and arrangement of the words in the
marks “is impossible to ignore. It is impossible for any consumer to move away from
a two-word mark without observing it in its entirety. The length of the mark is short
enough for any consumer to automatically observe the mark in its entirety.”10
3. Discussion
Although we have taken judicial notice, per the Examining Attorney’s request,
that VETUS connotes “veteran” or “experienced” in Latin when referring to soldiers,
we also note that the Examining Attorney has not presented any evidence showing
that the relevant consumers, i.e., veterans or soon-to-be veterans, are familiar with
Latin, particularly since “Latin is generally considered a dead language.” TRADEMARK
MANUAL OF EXAMINING PROCEDURE (TMEP) § 1207.01(b)(vi)(B) (October 2018). In the
absence of any other known meaning, we find it more likely that relevant consumers
would perceive, and put greater emphasis on, VETUS as an inherently distinctive
term with respect to the services in both the application and the Registration, thus
contributing to the likelihood that the respective marks will be confused.
This finding, however, does not aid Applicant, since the remaining wording in each
mark is either generic or descriptive, and has been disclaimed. The term “LEGAL” in
Applicant’s VETUS LEGAL mark is generic for the provision of legal services, and

10 11 TTABVUE 6 (Applicant’s Brief) (emphasis in original).
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the term “PRO” in Registrant’s PRO VETUS is descriptive of Registrant’s
professional or expert educational services. Disclaimed matter that is descriptive of
or generic for a party’s services is typically less significant or less dominant when
comparing marks, and we find that to be the case here, particularly in view of the
seemingly inherent nature of the term VETUS in the marks. See In re Detroit Athletic
Co., 903 F.3d 1297, 1305, 128 USPQ2d 1047, 1050 (Fed. Cir. 2018) (citing In re Dixie
Rests., Inc., 105 F.3d 1405, 1407, 41 USPQ2d 1531, 1533-34 (Fed. Cir. 1997));
TRADEMARK MANUAL OF EXAMINING PROCEDURE (TMEP) § 1207.01(b)(viii), (c)(ii)
(October 2018). We thus find that the marks are more similar than dissimilar when
viewed in their entireties.
Applicant’s contention that the placement and arrangement of the words in the
marks cannot be ignored, and that the marks are short enough to be observed in their
entireties, misses the point. The differences between the marks urged by Applicant
may be noticeable in a side-by-side comparison of the marks, but the marks “‘must be
considered … in light of the fallibility of human memory’ and ‘not on the basis of side-
by-side comparison.’” In re St. Helena Hosp., 774 F.3d 747, 113 USPQ2d 1082, 1085
(Fed. Cir. 2014) (quoting San Fernando Elec. Mfg. Co. v. JFD Elecs. Components
Corp., 565 F.2d 683, 196 USPQ 1, 3 (CCPA 1977)). In other words, we must bear in
mind that consumers may not necessarily encounter the marks in proximity and must
rely upon their recollections to compare them. See Neutrogena, 161 USPQ 687, 688
(CCPA 1969).
Applicant’s analogies to Packard Press, Inc. v. Hewlett-Packard Co., 227 F.3d
Serial No. 87888225
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1352, 56 USPQ2d 1351 (Fed. Cir. 2000) and In re Reubens Brews LLC, Ser. No.
86066711, 2015 TTAB LEXIS 542 (October 2015) (non-precedential) are not apt. In
Packard Press, the Court found that the Board had improperly dissected the marks
PACKARD TECHNOLOGIES and HEWLETT-PACKARD because, “without any
explanation,” it only considered the commercial impression of the shared word
PACKARD, and disregarded the term “HEWLETT” in “HEWLETT-PACKARD,”
before concluding that the marks were similar. Id. at 1354. That case involved the
mark HEWLETT-PACKARD, with two non-descriptive terms joined by a hyphen and
no disclaimer.
Here, as we have explained, consumers are likely to focus on the inherently
distinctive term VETUS over the remaining descriptive or generic wording in the
marks. Although marks must be considered in their entireties, it is 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 similarity of the marks. In
re Viterra, 671 F.3d 1358, 101 USPQ2d 1905, 1908 (Fed. Cir. 2012); In re Nat’l Data
Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir. 1985) (“There is nothing improper
in stating that, for rational reasons, more or less weight has been given to a particular
feature of a mark, provided the ultimate conclusion rests on consideration of the
marks in their entireties. Indeed, this type of analysis appears to be unavoidable.”).
In In re Reubens Brews LLC, Ser. No. 86066711, 2015 TTAB LEXIS 542 (TTAB
2015) (non-precedential), the Board found the applicant’s mark
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more dissimilar than similar to the registrant’s mark because
the term “BREWS” in the applicant’s mark (although generic and disclaimed) was
“substantially larger in size than the other elements of the mark and is presented in
a relatively distinctive style of lettering; “the prominent design portion of Applicant’s
mark, most specifically the presence of a barley stalk (barley being the key ingredient
in beer) that serves to reinforce the term BREWS”; and the terms REUBEN’S
(meaning a son of Jacob of the tribes of Israel or a corned beef, Swiss cheese and
sauerkraut sandwich) and REBENS (surname of the Flemish painter, Peter Paul
Rubens) have different meanings and were depicted in very different styles of
lettering. Id. at *14-17.
In the case at bar, Applicant’s and Registrant’s mark share the identical,
inherently distinctive and dominant term VETUS, and both marks are shown in
standard characters. As such, Registrant’s mark may be depicted in any font size,
style or color that Applicant might adopt for its mark. In re Viterra Inc., 101 USPQ2d
at 1909-11; Citigroup, 98 USPQ2d at 1259, cited in Anheuser-Busch, LLC v. Innvopak
Sys. Pty Ltd., 115 USPQ2d 1816, 1823 (TTAB 2015).
The first DuPont factor weighs in favor of finding likelihood of confusion.
B. Similarity or Dissimilarity of the Services

We turn now to the second DuPont factor, which considers the “similarity or
dissimilarity and nature of the goods or services as described in an application or
registration.” DuPont, 177 USPQ at 567. It is “not necessary that the goods be
Serial No. 87888225
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identical or even competitive to support a finding of a likelihood of confusion.” Coach
Servs., 101 USPQ2d at 1722 (quoting 7-Eleven, Inc. v. Wechsler, 83 USPQ2d 1715,
1724 (TTAB 2007)). “[L]ikelihood of confusion can be found ‘if the respective goods
are related in some manner and/or if the circumstances surrounding their marketing
are such that they could give rise to the mistaken belief that they emanate from the
same source.’” Id.
1. The Examining Attorney’s Argument
The Examining Attorney contends that the services are closely related because
“applicant and registrant both offer services to veterans, and because entities who
cater to veterans commonly provide workshops and seminars about veterans’ benefits
and legal services in the field of veterans’ issues.”11 Additionally, “they have a related
class of purchasers, namely veterans and soon-to-be veterans.”12 Furthermore, she
observes, “Registrant’s website shows that its program provides help in the “critical
domain” of “family/legal issues.”13 She points out that “[w]hile the registrant does not
directly provide legal services, its website states that a sponsor in the program ‘offers
support to the transferring service member and connects him or her to the
organizations/individuals which do provide these services.’”14 She concludes that
“[p]urchasers who participate in registrant’s workshops and seminars are likely to

11 13 TTABVUE 8 (Examining Attorney’s Brief).
12 Id. at 13.
13 Id. (quoting from Registrant’s website made of record with Applicant’s February 17, 2019
Response to Office Action, TSDR 15).
14 Id.
Serial No. 87888225
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believe, mistakenly, that the applicant, whose mark also uses the term VETUS, is
related to the registrant and provides legal services in association with the
registrant.”15
In support of her contentions, the Examining Attorney made of record Internet
evidence from a number of third-party websites to “show that entities who [sic]
provide seminars featuring information and support about veterans’ benefits and
transition to civilian life also provide legal services, advice, and consultation about
veterans’ benefits.”16 For example,
o The U.S. Department of Veterans Affairs website (benefits.va.gov)
shows that the department provides educational programs featuring
transition support and assistance and partners with legal professionals
who can address veterans’ legal needs.17

o Nashville Serving Veterans’ website (nashvilleservingveterans.com)
shows that connection to legal services is one of the transition resources
offered to transitioning veterans.18

o The American Legion (legion.org) provides legal assistance to veterans
and services to help female veterans in all stages of transition.19

o Swords to Plowshares (swords-to-plowshares.org) provides a wide
variety of workshops and webinars to assist vets transitioning to civilian
life as well as legal services.20

o TexVet WorkLife Institute (texvet.org) provides legal services and
services for transitioning veterans to civilian life.21

15 Id. at 10.
16 Id.
17 August 17, 2018 Office Action, TSDR 32-38.
18 Id. at 39-47.
19 March 12, 2019 Final Office Action, TSDR 32-39.
20 Id. at 40-52.
21 Id. at 53-55.
Serial No. 87888225
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o Veterans Legal Institute (vetslegal.com) provides legal services for
veterans and clinics and education courses relating to veterans’
benefits.22

o Military OneSource (militaryonesource.com) provides educational
programs about transitioning to civilian life from the military and legal
services and assistance in a variety of fields.23

o IAVA (Iraq and Afghanistan Veterans of America - iava.org) offers
veterans’ transition support and education programs and legal services
referrals.24

o Veterans of Foreign Wars (VFW – vfw.org) (provide legal services
relating to filing claims and separation benefit and education to assist
with the transition to civilian life.25

o The Philadelphia Bar Association coordinates information and pro bono
legal assistance for veterans relating to transition to civilian life.26

In addition, the Examining Attorney provided a number of third-party use-based
registrations to show “that educational and legal services for veterans are commonly
offered by a single source, as well as showing that various services relating to
transition from military to civilian life are commonly provided by the same entity,”27
including the following:
Reg. No. Relevant Services
3689753 Providing personal support services for United States
service members, veterans and their dependents, namely,
providing educational services in the nature of seminars,

22 Id. at 56-65.
23 5 TTABVUE 8-24 (Denial of Request for Reconsideration, Part 1).
24 Id. at 25-28; 6 TTABVUE 4-26 (Denial of Request for Reconsideration, Part 2).
25 6 TTABVUE 17-19 (Denial of Request for Reconsideration, Part 2); 7 TTABVUE 2-6 (Denial
of Request for Reconsideration, Part 3).
26 7 TTABVUE 7-8 (Denial of Request for Reconsideration, Part 3).
27 13 TTABVUE 11 (Examining Attorney’s Brief).
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workshops, lectures, and classes regarding career
counseling, medical, health, legal, insurance, housing,
psychological and emergency assistance; providing personal
support services for United States service members,
veterans and their dependents, namely, providing
assistance with legal forms; providing legal information to
veterans in connection with housing, insurance and benefits
forms28

4435000 Providing peer support services and personal support
services for veterans, namely, emotional counseling;
providing information for legal services; providing a website
to provide personal support services, live chat support
services and online resources for legal and psychological
needs for veterans.29

4934974 Veterans' services, namely, providing career training and
internship opportunities for formerly homeless and other
needy veterans; veterans' services, namely, providing case
management to low-income veterans to connect them with
services in the community, namely, coordinating the receipt
of public benefits, legal assistance, and medical services.30

4910000 Providing employment counseling information on how to
successfully transition jobs for veterans; charitable
foundation services, namely, providing financial support to
veterans for living expenses; providing counseling and
consulting in the field of healthcare benefits; mentoring of
veterans in the field of post-military life; providing health
care services in the nature of wellness programs, mental
health counseling, addiction treatment, general health
treatment to veterans; pro bono legal services for veterans.31

4987934 Providing classes and seminars in the field of dealing with
medical and psychological problems incurred while serving
in the military; providing patient advocate services in the
field of military veterans suffering from injuries incurred

28 August 17, 2018 Office Action, TSDR 12-14.
29 Id. at 18-20.
30 Id. at 21-23.
31 Id. at 24-26.
Serial No. 87888225
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while serving.32

5522482 Providing seminars, on-line training, mentoring, and
symposia regarding military-related legal and support
services; coordination of pro bono legal services provided by
association members to veterans and active duty military
personnel.33

4901581 Providing guidance, information and counseling to veterans
regarding administrative filing requirements and procedures
to assist them in dealing with military and governmental
entities to secure healthcare, financial and legal benefits and
services; organizing and conducting volunteer programs and
community service projects aimed at increasing support and
morale of veterans and assisting them throughout their
recovery process and in their assimilation and transition
back into their local or national community.34

5596054 Organizing and conducting volunteer programs and
community service projects aimed at increasing support and
morale of veterans and assisting them throughout their
recovery process and in their assimilation and transition
back into their local or national community; promotional
sponsorship of programs, events and activities that foster the
enjoyment or social integration of veterans within their local
and national community; providing guidance, information
and counseling to veterans regarding employee benefit plan
administrative filing requirements and procedures to assist
them in dealing with military and governmental entities to
secure legal benefits and services; providing guidance,
information and counseling to veterans regarding insurance
claims and financial administrative filing requirements and
procedures to assist them in dealing with military and
governmental entities to secure healthcare, financial and
legal benefits and services.35

32 Id. at 27-28.
33 Id. at 29-31.
34 March 12, 2019 Final Office Action, TSDR 12-14.
35 Id. at 17-19.
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5546435 Providing guidance, information and counseling to veterans
regarding administrative filing requirements and procedures
to assist them in dealing with military and governmental
entities to secure healthcare, financial and legal benefits and
services; organizing and conducting volunteer programs and
community service projects aimed at increasing support and
morale of veterans and assisting them throughout their
recovery process and in their assimilation and transition
back into their local or national community; promotional
sponsorship of programs, events and activities that foster the
enjoyment or social integration of veterans within their local
and national community.36

5488074 Providing referrals for military personnel to organizations
providing assistance, information, counseling, and/or
consulting in the fields of employment, education, finance,
financial readiness, veterans benefits, housing, legal
services, family counseling, family support, family resources,
community involvement, and/or volunteer programs;
organizing and conducting programs aimed at providing
transitioning military personnel with community
reintegration resources, namely, job fairs, employment
counseling information, career opportunities in the nature of
career planning, information, and placement services.37

2. Applicant’s Argument
Applicant argues that the respective marks “are associated with completely
different services,” since Applicant’s mark includes Class 45 legal services in all areas
of veterans benefits, whereas Registrant’s mark “is for services associated with Class
41 and does not identify or include such services.”38 According to Applicant,
Registrant could not even offer Applicant’s “legal services” without
engaging a licensed attorney. In fact, the cited mark service is registered
under Class 41 for conducting workshops and seminars in transitioning
veterans and separating service members to civilian life. Accordingly,

36 Id at 20-22.
37 Id. at 29-31.
38 11 TTABVUE 7 (Applicant’s Brief).
Serial No. 87888225
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considering the word portion of the marks as a whole, Applicant’s mark
VETUS LEGAL is a limited service category niche of providing legal
services to veterans concerning their Veterans Benefits and the legal
representation of clients in veterans’ benefits matters including appeal
of the denial of benefits.
…

In other words, Registrant is not a licensed attorney providing legal
services to veterans, as Applicant is and does. Registrant does not offer
and cannot offer act as legal counsel to its customers. Registrant’s
services and its relationship with its customers does not involve a
fiduciary duty, duty of confidentiality and loyalty or attorney-client
privilege. Thus, the nature of Applicant’s services are fundamentally
different from Registrant’s.39

3. Discussion
The third-party websites and registrations of record establish that the same
entities commonly provide, under the same mark or trade name, Registrant’s
educational services for veterans, including helping them transition to civilian life,
and Applicant’s legal services, including legal services relating to veteran benefits,
and that both kinds of services “are of a type which may emanate from a single
source.” In re Mucky Duck Mustard Co., 6 USPQ2d 1467, 1470 n.6 (TTAB 1988), aff’d,
864 F.2d 149 (Fed. Cir. 1988). See also In re Albert Trostel & Sons Co., 29 USPQ2d
1783, 1785-86 (TTAB 1993). This third-party evidence is corroborated by Registrant’s
website, which indicates that it provides “a trained peer mentoring program that
helps veterans and service members successfully transition from the military to
civilian life within the five critical domains,” including the legal domain:40

39 Id. at 7-8.
40 February 17, Response to Office Action, TSDR 17.
Serial No. 87888225
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The evidence shows that Applicant’s and Registrant’s services are sufficiently related
for likelihood of confusion to occur.
Applicant lays great stress upon the unsupported contention that Registrant does
not provide legal services, which are classified by the USPTO in Class 45, and instead
provides educational services that are classified in Class 41. However, as the
Examining Attorney correctly notes, “[t]he issue is not likelihood of confusion
between particular services, but likelihood of confusion as to the source or
sponsorship of those goods.”41 See In re Majestic Distilling Co., 65 USPQ2d at 1205;
In re Shell Oil Co., 26 USPQ2d at 1689.
Moreover, classification is irrelevant from our standpoint. “The classification
system was established for the convenience of the [Patent and Trademark] Office

41 13 TTABVUE 11 (Examining Attorney’s Brief).
Serial No. 87888225
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rather than to indicate that [services] in the same class are necessarily related or that
classification in different classes indicates that they are not related.” Nat’l Football
League v. Jasper All. Corp., 16 USPQ2d 1212, 1216 (TTAB 1990); see also Detroit Ath.
Co., 128 USPQ2d at 1051 (quoting Jean Patou Inc. v. Theon Inc., 9 F.3d 971, 29
USPQ2d 1771, 1774 (Fed. Cir. 1993) (classification is for the convenience of the Office
and is “wholly irrelevant to the issue of registrability under section 1052(d), which
makes no reference to classification.”)).
As the Examining Attorney also observes, “applicant’s services are not limited to
legal services provided by attorneys” and include legal services in the nature of
“providing customized documentation, information, counseling, advice and
consultation services in all areas of Veterans Benefits.”42 Such services, she notes,
“can encompass services in the legal field that are not provided by attorneys” and “do
not inherently involve attorney-client privilege, fiduciary duty or a duty of
confidentiality and loyalty, despite applicant’s claim.”43 Applicant’s magnified
emphasis on the distinction between its services and those of Registrant’s services is
unpersuasive.
The second DuPont factor weighs in favor of finding likelihood of confusion.
C. Similarity or Dissimilarity of Trade Channels

The third DuPont factor concerns the “similarity or dissimilarity of established,
likely-to-continue trade channels.” DuPont, 177 USPQ at 567; Stone Lion Capital

42 Id. at 12.
43 Id.
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Partners, LP v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014). Applicant contends that the marks “appear in different trade channels for the
services” because “Applicant’s mark is exclusively for legal services to veterans,”
whereas “[t] cited mark … is solely for providing workshops and seminars to help in
transitioning veterans and separating service members to civilian life.”44 This,
according to Applicant, shows that “the target audiences are plainly distinct because
the need for legal services is different in every aspect and nature than the need to
learn how to transition back into civilian life.”45 Applicant also argues that “it is not
the ‘natural expansion’ of a non-profit that provides seminars and workshops to
expand into a law firm or legal services provider.”46
Neither the Registration nor the application contains any restriction on the
channels of trade or classes of purchasers. We therefore presume that the cited
Registration and the involved application encompass all services of the type
described, that they move in all normal channels of trade, and that they are available
to all classes of relevant purchasers, i.e., veterans or soon-to-be veterans, see Levi
Strauss & Co. v. Abercrombie & Fitch Trading Co., 719 F.3d 1367, 107 USPQ2d 1167,
1173 (Fed. Cir. 2013), on the basis of all normal and usual methods of distribution.
SquirtCo v. Tomy Corp., 697 F.2d 1038, 216 USPQ 937, 940 (Fed. Cir. 1983).
Applicant’s unsupported contention that the marks “appear in different trade

44 11 TTABVUE 10 (Applicant’s Brief).
45 Id.
46 Id.
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channels” is disproved by the third-party evidence of record showing that legal and
educational services for veterans, including assistance with transition to civilian life,
are often promoted together by the same entities through their websites. The target
audiences are not “plainly distinct”; they are, as Applicant concedes, “veterans …
particularly those seeking the services of Applicant and the Registrant, [who] are
very interested in maintaining their benefits.”47 Applicant’s further contention, also
unsupported, that “it is not the ‘natural expansion’ of a non-profit that provides
seminars and workshops to expand into a law firm or legal services provider,” as the
Examining Attorney notes, “confuses the nature of the services with trade
channels.”48 On the record before us, we find that the channels of trade overlap.
The third DuPont factor weighs in favor of finding likelihood of confusion.
D. Additional DuPont Factors Argued by Applicant

Applicant argues that additional DuPont factors weigh against a finding of
likelihood of confusion including
o the fourth DuPont factor, which considers “[t]he conditions under which
and buyers to whom sales are made, i.e., ‘impulse’ vs. careful,
sophisticated purchasing”;

o the fifth DuPont factor, which considers the “fame of the prior mark”;

o the sixth DuPont factor, which considers the “number and nature of
similar marks in use on similar goods”;

o the tenth DuPont factor, which considers the “market interface between
applicant and the owner of the prior mark”; and

o the twelfth DuPont factor, which considers the “extent of possible

47 Id. at 12.
48 13 TTABVUE 14 (Examining Attorney’s Brief).
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confusion.”

DuPont, 177 USPQ at 567. However, Applicant’s assertions find no support in the
record.
For example, with regard to purchasing conditions, Applicant states that “it does
not appear that the prior cited mark can claim any fame, and thus it does not have
the benefit of a large consumer base that recognizes and associates Registrant’s mark
with its Class 41 services.”49 Because of the nature of the evidence required to
establish the fame of a registered mark, the Board does not expect examining
attorneys to submit evidence as to the fame of the cited mark in an ex parte
proceeding, and they do not usually do so. See In re Thomas, 79 USPQ2d 1021, 1027
n.11 (TTAB 2006). Rather, in an ex parte appeal the “fame of the mark” factor is
normally treated as neutral because the record generally includes no evidence as to
fame. See id.; see also In re Davey Prods. Pty Ltd., 92 USPQ2d 1198, 1204 (TTAB
2009) (noting that the absence of evidence as to the fame of the registered mark “is
not particularly significant in the context of an ex parte proceeding”). This factor is
therefore neutral in our analysis.
Regarding the number and nature of similar marks in use on similar goods,
Applicant asserts that “a quick TESS search reveals 27 marks with the word ‘Vetus’
in them. Thus, the word Vetus is a common enough word for trademarks and for
marks in connection with different services than those of the Registrant.”50

49 11 TTABVUE 12 (Applicant’s Brief).
50 Id. at 13 (emphasis added, citations omitted).
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“Moreover,” Applicant concludes, “based on declarations filed in each application, the
use of ‘vetus’ in numerous marks demonstrates that consumers are able to distinguish
between the various services based on small distinctions among the ‘vetus’ marks.”51
The problem with Applicant’s argument, again, is lack of evidence. None of the
VETUS marks referred to by Applicant, or their file histories, are of record.52 Calypso
Tech. Inc. v. Calypso Capital Mgmt. LP, 100 USPQ2d 1213, 1217 (TTAB 2011)
(summaries of search results for third-party registrations are not official records and
have not been considered). Because the putative registrations for VETUS-formative
marks are not of record, we cannot determine if they are valid and subsisting, use-
based, and identify relevant goods or services. This factor is also neutral in our
analysis.
Applicant also argues that “there is no market interface between Applicant’s
services and Registrant’s services.”53 Although “market interface” is one of the
DuPont factors we may consider where relevant, it is clear from Applicant's
arguments—that the services are different, and that Applicant and the Registrant
are not competitors and do not interact with each other in the marketplace—that
Applicant is treating this argument as part of the similarity of the services factor,
and not as a separate factor. However, the “market interface between applicant and
the owner of a prior mark” factor, as explained in DuPont, is whether there is a

51 Id.
52 Applicant refers to an “Exhibit 2” in its brief, but there is no TESS listing of VETUS-
formative marks anywhere in the record.
53 11 TTABVUE 14 (Applicant’s Brief).
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consent to register or use, an agreement designed to preclude confusion, an
assignment of the mark, or laches and estoppel. See In re Opus One, 60 USPQ2d 1812,
1819-22 (TTAB 2001). None of these points is applicable to the present case, making
this factor neutral as well.
Finally, Applicant argues, again without any supporting basis, that “to the extent
there is any likelihood of confusion between Applicant’s ‘VETUS LEGAL’ and
Registrant’s ‘PRO VETUS’, it is de minimus.”54 We disagree with Applicant that no
potential confusion exists because, as explained above, the marks are similar, the
services are related and travel in overlapping channels of trade to the same classes
of customers. Accordingly, this factor is also neutral in our analysis.
II. Conclusion
The first, second, and third DuPont factors support a finding of a likelihood of
confusion. Viewed in their entireties, the marks are similar in appearance, sound,
meaning and overall commercial impression, the services are related, and the
channels of trade and classes of consumers are overlapping. The fourth, fifth, sixth,
tenth, and twelfth DuPont factors are neutral. We find, on the basis of the record as
a whole, that a consumer familiar with Registrant’s mark PRO VETUS for
“conducting workshops and seminars in transitioning veterans and separating
service members to civilian life,” who separately encounters Applicant's mark for
“legal services; legal services, namely, providing customized documentation,
information, counseling, advice and consultation services in all areas of Veterans

54 Id. at 15.
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Benefits; Attorney services, namely, representation of clients in Veterans Benefits
matters,” is likely to believe, mistakenly, that those services originate with, or are
sponsored or authorized by Registrant.
Decision: The refusal to register is affirmed.