Cyber-channel Inc.

Trademark Trial and Appeal Board

Mar 15, 2007

No. 76567273 (T.T.A.B. Mar. 15, 2007)

Hearing: Mailed:
October 25, 2006 March 15, 2007
jtw

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Cyberchannel Inc.
________

Serial Nos. 76567272 and 765672731
_______

Michael F. Petock of Petock & Petock, LLC for Cyberchannel
Inc.

Marlene D. Bell, Trademark Examining Attorney, Law Office
105 (Thomas G. Howell, Managing Attorney)
_______

Before Seeherman, Rogers and Walsh, Administrative
Trademark Judges.

Opinion by Walsh, Administrative Trademark Judge:

On December 30, 2003, Cyberchannel Inc. (applicant)
filed two applications to register marks on the Principal
Register, Application No. 76567273 for the mark LEGALEDGE
in standard-character form and Application No. 76567272 for
the mark LEGALEDGE SOFTWARE in the form shown here.

1 Because the appeals involve common issues we will address both
appeals in one opinion.
THIS OPINION
IS NOT A PRECEDENT OF
THE T.T.A.B.
Ser No. 76567272
2

In both applications applicant identifies its goods as
“computer software product sold to corporate and government
legal departments for criminal case and civil matter
management for the customer's internal use” in
International Class 9. In Application Ser. No. 76567273
applicant claims both first use of the mark anywhere and
first use of the mark in commerce on October 1, 2003. In
Application Ser. No. 76567272, applicant asserts its
intention to use the mark in commerce under Trademark Act
Section 1(b), 15 U.S.C. § 1051(b), as the basis for
registration, and applicant disclaims the word “SOFTWARE.”
In both applications, the Examining Attorney has
refused registration under Trademark Act Section 2(d), 15
U.S.C. § 1052(d), based on a likelihood of confusion with
the mark GRAYCARY TECHNOLOGY’S LEGAL EDGE in standard-
character form in Reg. No. 2806382 on the Principal
Register for services identified as “providing and (sic)
online database containing legal document forms;
application service provider featuring software that allows
Ser No. 76567272
3
the online exchange of information, documents, emails, task
lists, calendar and databases” in International Class 42.
The cited registration issued on January 20, 2004. The
registration specifies a date of first use anywhere and a
date of first use in commerce in March 2000. The
registration includes a disclaimer of “LEGAL.”
Applicant argued against the refusals; the Examining
Attorney made the refusals final; and applicant appealed.
Applicant and the Examining Attorney filed briefs and took
part in an oral hearing.
We reverse the refusals in both applications.
LIKELIHOOD OF CONFUSION
Section 2(d) of the Trademark Act precludes
registration of an applicant’s mark “which so resembles a
mark registered in the Patent and Trademark Office… as to
be likely, when used on or in connection with the goods of
the applicant, to cause confusion…” The opinion in In re
E. I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ
563, 567 (CCPA 1977) sets forth the factors to be
considered in determining likelihood of confusion.
The Marks
In comparing the marks we must consider the
appearance, sound, connotation and commercial impression of
the marks at issue. Palm Bay Imports Inc. v. Veuve
Ser No. 76567272
4
Clicquot Ponsardin Maison Fondee En 1772, 396 F.3d 1369, 73
USPQ2d 1689, 1692 (Fed. Cir. 2005).
Applicant argues that the marks differ for a number of
reasons. First applicant argues that GRAYCARY is the
dominant feature of the mark because it is arbitrary and
because “… it makes sense to consider ‘GRAYCARY’ as the
source indicating feature of the mark since that part of
the mark does in fact indicate the source of Registrant’s
services, which is the law firm of Gray Cary Ware &
Freidenrich, LLP.” Applicant’s brief at 10. Applicant
also notes that “LEGAL” is disclaimed in the registration,
and applicant argues that the words “TECHNOLOGY’S LEGAL
EDGE” form a descriptive phrase.2 Applicant states, “The
mark connotes that ‘“Gray Cary” is technology’s legal
edge.’” Applicant’s brief at 7 (emphasis in the original).
Applicant argues more generally that the marks differ as to
appearance, sound, connotation and commercial impression.
The Examining Attorney disagrees and argues that the marks
are confusingly similar because they include the common
elements LEGAL and EDGE.

2 Here applicant asks us to consider materials regarding Gray
Cary, including other marks it has registered and the services it
offers under those marks. We decline to consider this extrinsic
evidence in evaluating how registrant’s mark in this case would
be perceived. It is beyond the scope of what we may consider.
Cf. In re Bercut-Vandervoort & Co., 229 USPQ 763, 764 (TTAB
1986).
Ser No. 76567272
5
In comparing the marks, the threshold issue is
whether, as used in the cited mark, GRAYCARY would be
perceived as a house mark and TECHNOLOGY’S LEGAL EDGE would
be perceived as a product mark.
First, we recognize that there is no per se rule
regarding the effect of a house mark or trade name in
determining likelihood of confusion. See New England Fish
Co. v. The Hervin Co., 511 F.2d 562, 184 USPQ 817 (CCPA
1975). See also Knight Textile Corp. v. Jones Investment
Co., 75 USPQ2d 1313, 1315 (TTAB 2005) and cases cited
therein. We also note that the Board has held that there
is no real difference between cases where the allegedly
distinguishing house mark appears in the cited mark rather
than the applicant’s mark. In re Champion International
Corp., 196 USPQ 48, 49 (TTAB 1977). Furthermore, we note
the line of “house-mark” cases where the marks were found
not to be similar because “… there are some recognizable
differences in the asserted conflicting product marks or
the product marks in question are highly suggestive or play
upon commonly used or registered terms…” Id. (citations
omitted).
In this case, applicant argues that TECHNOLOGY’S LEGAL
EDGE would be perceived as a slogan, and that LEGAL EDGE,
as used in this mark, would not be perceived as an
Ser No. 76567272
6
independent source-identifying product mark. We agree with
applicant. That is, we conclude that relevant purchasers
would perceive GRAYCARY as a house mark or company name and
TECHNOLOGY’S LEGAL EDGE as a slogan referring to the
GRAYCARY company name or trade name. GRAYCARY is the
dominant element in the cited mark. Moreover, the cited
mark, when viewed in its entirety, conveys the impression
of the house mark, GRAYCARY, combined with a slogan
emphasizing the advantages of technology -- commercial
impressions that are absent from applicant’s mark.
Therefore, when we view the marks as a whole, along with
other factors, we conclude that GRAYCARY TECHNOLOGY’S LEGAL
EDGE is not confusingly similar to LEGALEDGE or LEGALEDGE
SOFTWARE.
In reaching this conclusion, we reject applicant’s
argument that its display of LEGALEDGE in both of its marks
without a space, or the inclusion of the word SOFTWARE in
one of its marks, would distinguish its marks from the
registered mark. Furthermore, we reject applicant’s
argument that the disclaimer in the registration somehow
distinguishes the marks. The existence of the disclaimer
has no bearing on how relevant purchasers will perceive the
registered mark. Norton Co. v. Talbert, 202 USPQ 542, 544
Ser No. 76567272
7
(TTAB 1979). Cf. Marriott Corp. v. Fairmont Foods Co., 171
USPQ 58, 63 (TTAB 1971).
Purchaser Sophistication
Applicant also argues that there is no likelihood of
confusion because the purchasers of its goods are
sophisticated. Applicant argues that its products are
expensive, and applicant argues further, “The goods of
Applicant are sold to careful, sophisticated buyers. The
decision to purchase Applicant’s goods is carefully made by
corporate and government legal departments and is well
thought out.” Applicant’s brief at 9. Applicant also
argues that registrant’s services, too, are purchased by
careful, sophisticated purchasers. The Examining Attorney
disagrees and notes that even sophisticated purchasers are
not immune from trademark confusion, citing In re Decombe,
9 USPQ2d 1812 (TTAB 1988) and In re Pellerin Milnor Corp.,
221 USPQ 558 (TTAB 1983).
We conclude that the applicant’s goods, as identified
in the application, are specialized and more expensive than
goods which would be purchased on impulse. Furthermore, we
conclude that the purchasers, legal professionals, are
relatively sophisticated.
Ser No. 76567272
8
Accordingly, we conclude that the evidence in this
application bearing on the sophistication of the potential
purchasers favors a finding of no likelihood of confusion.
The Goods and Services
We conclude here that applicant’s goods and the
services identified in the cited registration, though
different in some respects, are related. However, overall
we conclude that there is not a likelihood of confusion
because the differences between the marks and the
sophistication of the potential purchasers outweighs the
similarity in the goods and services. Therefore, our
discussion of the goods and services must be viewed in that
broader context.
The goods and services of applicant and registrant
need not be identical to find a likelihood of confusion
under Trademark Act Section 2(d). The goods and services
need only be related in such a way that the circumstances
surrounding their marketing would result in relevant
consumers mistakenly believing that the goods and services
originate from the same source. On-Line Careline Inc. v.
America Online Inc., 229 F.3d 1080, 56 USPQ2d 1471 (Fed.
Cir. 2000).
Furthermore, in comparing the goods and services, and
the channels of trade for the goods and services, we must
Ser No. 76567272
9
consider the goods and services as identified in the
application and registration. CBS Inc. v. Morrow, 708 F.2d
1579, 218 USPQ 198, 199 (Fed. Cir. 1983); In re Melville
Corp., 18 USPQ2d 1386, 1388 (TTAB 1991).
Applicant argues that its goods and registrant’s
services are sufficiently different to preclude confusion.
Applicant states, “… Applicant’s mark is for goods while
the cited registration is for services.” Applicant’s brief
at 3. Applicant also places great emphasis on its
allegation that the registrant is a law firm. Applicant
argues further that, unlike the registrant, it does not
provide any type of online database service or fee-based
service.
The Examining Attorney argues, “The Applicant’s goods
are computer software for use in the legal field and
Registrant’s services are computer services relating to the
legal field. Thus, they are CLEARLY related.” Examining
Attorney’s brief at unnumbered page 6 (emphasis in the
original). The Examining Attorney also argues that the
goods and services at issue could serve similar purposes.
To support her position, the Examining Attorney has
submitted third-party registrations which cover both the
type of goods in the application and the type of services
Ser No. 76567272
10
in the cited registration. For example, those
registrations include:
Reg. No. 3033313 for the mark THE NEXT GENERATION IN
LEGAL SOFTWARE for goods including “computer software,
namely, software for managing attorney dockets by
creating reminders to notify users of impending work
project deadlines for use in law firms and instruction
manuals sold as a unit therewith” in International
Class 9 and for services including “design for others
of computer software for use in law firms” in
International Class 42; and

Reg. No. 3040507 for the mark WHERE EVERY CASE IS A
PRIORITY for goods including “computer software for
use in the legal field featuring litigation
management, insurance claim management and insurance
claim processing” in International Class 9 and for
services including “providing temporary use of non-
downloadable web-based computer software for use in
the legal field featuring litigation management,
insurance claim management and insurance claim
processing” in Interntional Class 42.

First, we cannot consider extrinsic material, such as
applicant’s arguments and evidence that the registrant is a
law firm engaged primarily in the rendering of legal
services. In re Bercut-Vandervoort & Co., 229 USPQ at 764.
Also, we reject applicant’s overly broad arguments
that goods are unrelated to services. See MSI Data Corp.
v. Microprocessor Systems, Inc., 220 USPQ 655, 658 (TTAB
1983); Corinthian Broadcasting Corp. v. Nippon Electric
Co., Ltd., 219 USPQ 733 (TTAB 1983). Rather, we must look
to the identifications of goods and services and the
Ser No. 76567272
11
relevant probative evidence to determine whether the goods
and services are related.
The third-party registrations referenced above, and
the others submitted by the examining attorney, suggest
that the types of goods and services of applicant and
registrant may emanate from the same source under the same
mark. In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993).
Accordingly, we conclude that the goods and services
of applicant and registrant, though diffferent in some
respects, are related.
Actual Confusion
Applicant argues briefly that there has been no actual
confusion between its marks and the mark of the registrant.
We do not consider this factor to be significant in this
case. First, there is no evidence of the extent to which
there has been an opportunity for confusion. More
importantly, in an ex parte proceeding, “uncorroborated
statements of no known instances of actual confusion are of
little evidentiary value.” In re Majestic Distilling Co.,
315 F.3d 1311, 65 USPQ2d 1201, 1205 (Fed. Cir. 2003). See
also In re Kangaroos U.S.A., 223 USPQ 1025, 1026-27 (TTAB
1984).
Ser No. 76567272
12
Other Arguments
Applicant has also argued that we should permit
registration of its marks because its predecessor owned
registrations, which have lapsed, for the LEGALEDGE marks
which coexisted for a time with the cited registered mark.
This Board has generally rejected the premise that evidence
that similar marks previously “coexisted” on the register
precludes a refusal which is otherwise proper. We must
consider the refusals before us on the merits without
regard to actions taken by examining attorneys in other
applications. In re Nett Designs, Inc., 236 F.3d 1339, 57
USPQ2d 1564, 1566 (Fed. Cir. 2001); See also In re Sunmarks
Inc., 32 USPQ2d 1470, 1472 (TTAB 1994). Therefore, we
reject this argument.
Conclusion
In conclusion, based on all evidence of record in
these appeals bearing on the du Pont factors, we find that
there is no likelihood of confusion between applicant’s
LEGALEDGE and LEGALEDGE SOFTWARE marks and the cited
GRAYCARY TECHNOLOGY’S LEGAL EDGE mark. We conclude so
principally due to the differences between the marks and
the sophistication of the purchasers of applicant’s goods.
Decision: In each application, the refusal to
register under Trademark Act Section 2(d) is reversed.