ALM Media Properties, LLC

Trademark Trial and Appeal Board

Jun 14, 2013

No. 77953193 (T.T.A.B. Jun. 14, 2013)

THIS OPINION IS NOT A
PRECEDENT OF THE TTAB

Hearing: Mailed:
January 22, 2013 June 14, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
_____

Trademark Trial and Appeal Board
_____

In re ALM Media Properties, LLC
_____

Serial Nos. 77953193 (parent) and 77983288 (child)

_____

Jordan A. Lavine of Flater/Greenberg PC for ALM Media Properties, LLC.

Tobey E. Bulloff, Trademark Examining Attorney, Law Office 117 (Brett Golden,
Managing Attorney).
_____

Before Seeherman, Greenbaum, and Gorowitz, Administrative Trademark Judges.

Opinion by Gorowitz, Administrative Trademark Judge:
ALM Media Properties, LLC (applicant) filed an application for the mark IP
INSIDER, with IP disclaimed, for:
Magazines featuring information in the field of law;
newsletters in the field of law in Class 16;
Providing newsletters in the field of law via e-mail;
providing on-line publications in the nature of magazines
and newsletters in the field of law in Class 41; and
Serial Nos. 77953193 and 77983288

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Providing news, information and commentary in the field
of law through an Internet website in Class 45.1
Registration of all of the goods and services in the application has been
refused pursuant to Section 2(d) of the Trademark Act on the ground of likelihood of
confusion with the mark TRADEMARK INSIDER, with TRADEMARK disclaimed,
for a “periodical in the field of intellectual property.”2
Registration of the application in Class 16 was also refused pursuant to
Sections 1, 2, and 45 of the Trademark Act, 15 U.S.C. §§ 1051, 1052 and 1127, on
the ground that applicant's proposed mark does not function as a trademark for the
identified goods because it identifies only a portion of applicant’s publication.
Applicant appealed the final refusal, but limited its arguments to the ground
of likelihood of confusion. In its reply brief, applicant stated that it did not contest
the examining attorney’s conclusion that the applied-for mark fails to function as a
trademark for the Class 16 goods, and that, if the likelihood of confusion refusal
were reversed, it would divide its application to seek registration for the Class 16
goods on the Supplemental Register. At the oral hearing held on January 22, 2013,
the Board advised applicant that it could not defer filing a request to divide until
after the Board issued a decision. Accordingly, on January 31, 2013, applicant filed
a request for remand in order to have the application divided and the Class 16
application amended to the Supplemental Register. On February 19, 2013, the

1 App. Ser. No. 77953193, filed on March 8, 2010 based on Section 1 (a) of the Trademark
Act, 15 U.S.C. § 1051(a), claiming first use as early as February 12, 2010 and use in
commerce as early as February 12, 2010.
2 Reg. No. 2713256, issued on May 6, 2003; Section 8 Declaration accepted and Section 15
Declaration acknowledged.
Serial Nos. 77953193 and 77983288

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application was divided into Ser. No. 77943193 in Class 16 (the parent application)
and Ser. No. 77983288 in Classes 41 and 45 (the child application). The examining
attorney accepted the amendment to the Supplemental Register for the Class 16
parent application.
Accordingly, the only issue before us is likelihood of confusion, which applies
to all classes of goods and services in the applications.
As a preliminary matter, we note that both applicant and the examining
attorney attached copies of numerous third-party registrations from the TESS
database to their appeal briefs. “The record in the application should be complete
prior to the filing of an appeal. The Trademark Trial and Appeal Board will
ordinarily not consider additional evidence … after the appeal is filed.”
Trademark Rule 2.142(d), 37 C.F.R. 2.142(d). The majority of the registrations
submitted were already of record, and therefore have been considered.3 In addition,
because the examining attorney treated as of record four of the fifteen registrations
that applicant submitted for the first time with its brief, we deem them to have
been stipulated into the record.4 We have not considered the other eleven
registrations.5 Nor have we considered the four registrations that the examining

3 It is not necessary or desirable to attach as exhibits to a brief evidence that is already in
the application because the application file is of record. TBMP § 1203.02(e).
4 Reg. Nos. 1269834 – COMMERCIAL LEASE LAW INSIDER, 1170168 – APARTMENT
LAW INSIDER, 2394170 – TAX CREDIT HOUSING MANAGEMENT INSIDER, and
296693 – COMMUNITY ASSOCIATION MANAGER INSIDER.
5 Reg. No. 2389875, Reg. No. 3984853, Reg. No. 2521224, Reg. No. 2787639, Reg. No.
3653398, Reg. No. 4008664, Reg. No. 3631467, Reg. No. 36828224, Reg. No. 3999410 Reg.
No. 3408357, and Reg. No. 3417947.
Serial Nos. 77953193 and 77983288

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attorney submitted for the first time with her brief.6 We also note that for the first
time in its reply brief, applicant cited to a number of publication titles, giving the
URL for each publication. The webpages were never made of record during
prosecution, nor did applicant even mention during prosecution that these
publications existed, and therefore we have not given these alleged third-party uses
any consideration.
We turn next to the issue of likelihood of confusion. Our determination of
likelihood of confusion is based on an analysis of all of the probative facts in
evidence that are relevant to the factors set forth in In re E. I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). See also, In re Majestic
Distilling Co., Inc., 315 F.3d 1311, 65 USPQ2d 1201 (Fed. Cir. 2003).
We start our discussion with a comparison of the goods and services
identified in the applications and the goods identified in the cited registration.
It is uncontested that the applicant’s Class 16 goods are magazines and
newsletters in the field of intellectual property law. Applicant disclaimed “IP” in
response to the examining attorney’s requirement because IP “merely describes the
subject area of applicant’s goods and services, which is intellectual property (or ‘IP’)
law.” April 12, 2010 Office action. The goods in the cited registration are identified
as a “periodical in the field of intellectual property.” Therefore, the identification of
goods in the cited registration encompasses the goods identified in applicant’s

6 Reg. No. 1879207, Reg. No. 2072337, Reg. No. 2318585, and Reg. No. 2841823.
Serial Nos. 77953193 and 77983288

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application, and applicant’s Class 16 goods are legally identical to the goods in the
cited registration.
The examining attorney categorized both classes of applicant’s services as
“very closely related to the hard copy publications [of registrant] since they are
merely internet versions of the printed goods or webpages containing the same kind
of information.” Examining Attorney’s Brief, p. 13. We agree with the examining
attorney’s categorization and note that it was not contested by the applicant; in fact,
in its main brief, applicant did not discuss the factor of the similarity of the goods
and services at all, and in its reply brief, discussed this factor only in terms of the
specific fields—trademark vs. intellectual property—of the goods and services.
Accordingly, we find that applicant’s goods are legally identical and its
services are closely related to the goods in the cited registration. Given that the
goods in the application and the cited registration are legally identical, and there
are no limitations in the identifications of goods as to their channels of trade or
classes of purchasers, it is presumed that they would move in the same channels of
trade, and would be purchased by the same class of purchasers, who are identified
by applicant as “intellectual property law practitioners.”7 See In re Elbaum, 211
USPQ 639, 640 (TTAB 1981). See also Hewlett-Packard Co. v. Packard Press Inc.,
281 F3d 1261, 62 USPQ2d 1001, 1005. In addition, since applicant’s services would
be of interest to at least those intellectual property lawyers who practice trademark

7 Appeal Brief, p. 9.
Serial Nos. 77953193 and 77983288

6

law, registrant’s goods and applicant’s services would be encountered by and
purchased by common classes of purchasers.
Next, we examine “the similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and commercial impression.”
du Pont, 177 USPQ at 567. The marks at issue are IP INSIDER and TRADEMARK
INSIDER.
The marks are similar in appearance and sound, in that they both consist of
two words, ending with INSIDER. Also, they both begin with words that relate to
the area of intellectual property law. The marks are very close in meaning and
commercial impression.
Applicant has argued that the only word common to both marks is INSIDER,
and applicant contends this word is “weak as a trademark in the publishing field,
and particularly in the field of legal publications.” Applicant’s Brief, p. 5. As a
result, applicant argues that the presence of this word is not a sufficient basis on
which to find a likelihood of confusion. We agree that the evidence of third-party
registrations establishes that the term INSIDER is weak in the publishing field;
however, its weakness does not rule out a finding that the marks are similar. As
noted, it is not merely that the marks share this element; rather the marks both
begin with a term that references intellectual property or an aspect of intellectual
property, followed by the identical word INSIDER, so that the marks have the same
structure and are similar in meaning and overall commercial impression.
Serial Nos. 77953193 and 77983288

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Applicant asserts that consumers already distinguish between a number of
different marks containing the term INSIDER used in connection with
publications.8 To support its position, applicant cites to the co-existence of
registrations for the marks “Commercial Lease Law Insider” and “Apartment Law
Insider” for “newsletters for the real estate industry,” which applicant asserts are
owned by different parties.9 Aside from the fact that third-party registrations are
not evidence of use of the marks, the examining attorney has shown that these
registrations, as well as several other registrations for publications referenced by
applicant, are owned by the same party, Vendome Group, LLC.10 Applicant’s
reliance on the co-existence of a registration for the mark THE LAW BUSINESS
INSIDER, owned by Professional Recruiters Inc., for “providing temporary use of
online nondownloadable software enabling integration of content from daily blogs
for lawyers and business executives” and a registration for the mark BUSINESS
INSIDER, owned by Assoc. Bank Corp., for “magazines featuring articles for
business banking customers on varying business, financial, and economic-related
topics,” is inapposite since the subject matter of the goods and services identified in
those registrations, and the customers for those goods and services, are different.

8 Appeal Brief, p. 3.
9 Appeal Brief, pp. 4-5.
10 Examining Attorney’s Brief, p. 6-7.
The other registrations owned by the Vendome Group, LLC are for the marks:
APARTMENT BUILDING MANAGEMENT INSIDER, TAX CREDIT HOUSING
MANAGEMENT INSIDER and COMMUNITY ASSOCIATION MANAGEMENT INSIDER.
Serial Nos. 77953193 and 77983288

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Thus, although we acknowledge that INSIDER is a weak term, and that the
registered mark, consisting of the descriptive term TRADEMARK combined with
INSIDER, is necessarily also weak, the scope of protection to which it is entitled
still extends to prevent the registration of applicant’s very similar mark IP
INSIDER.
Applicant contends that because the “likely readers and purchasers of the
respective publications are legal professionals in the field of intellectual property,”
the purchasers would be sophisticated. Appeal Brief, p. 2. We agree. However,
even though “the relevant class of buyers may be sophisticated and exercise care
does not necessarily impose on that class the responsibility of distinguishing
between similar trademarks for similar goods. Human memories even of
discriminating purchasers are not infallible.” In re Research and Trading Corp., 793
F2d 1276, 230 USPQ 49, 50 (Fed. Cir. 1986) (internal citation omitted). Further,
applicant contends that consumers will not believe that one publisher would offer
both a publication about trademark law and a publication about intellectual
property law, and therefore will view the TRADEMARK INSIDER publication and
the IP INSIDER publication as coming from different sources. We disagree. Since
trademark law is a subset of intellectual property law, it would be logical for
consumers to assume, because of the similarity of the marks, that both publications
come from the same source.
Finally, applicant contends that applicant’s publication has co-existed with
registrant’s publication for approximately 17 months and there have been “no
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