Douglas Smurr and Bret Bocook

Trademark Trial and Appeal Board

Oct 3, 2013

No. 85342789 (T.T.A.B. Oct. 3, 2013)

Mailed:
October 3, 2013

UNITED STATES PATENT AND TRADEMARK OFFICE
________

Trademark Trial and Appeal Board
________

In re Douglas Smurr and Bret Bocook
________

Serial No. 85342789
_______

Douglas Smurr of World’s Law, LLP for Douglas Smurr and
Bret Bocook.

Tamara Frazier, Trademark Examining Attorney, Law Office
116 (Michael W. Baird, Managing Attorney).
_______

Before Seeherman, Bucher and Adlin, Administrative
Trademark Judges.

Opinion by Seeherman, Administrative Trademark Judge:

Douglas Smurr and Bret Bocook, two individuals who are
joint applicants, have appealed from the examining
attorney’s refusal to register the mark WORLD’S LAW in
standard characters, with LAW disclaimed, for “legal
services, namely the practice of law by licensed
THIS OPINION IS NOT A
PRECEDENT OF THE TTAB
Ser. No. 85342789
2
attorneys.”1 Registration has been refused pursuant to
Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d), on
the ground that applicant’s mark so resembles the
registered mark WORLD LAW GROUP, in typed drawing form,
with LAW GROUP disclaimed, for legal services,2 that, as
used in connection with applicants’ identified services, it
is likely to cause confusion or mistake or to deceive.
We affirm the refusal of registration.
Our determination of the issue 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). In any likelihood of confusion analysis, two
key considerations are the similarities between the marks
and the similarities between the goods and/or services.
See Federated Foods, Inc. v. Fort Howard Paper Co., 544
F.2d 1098, 192 USPQ 24 (CCPA 1976). See also, In re Dixie

1 Application Serial No. 85342789, filed June 10, 2011,
asserting first use as early as May 15, 2006 and first use in
commerce as early as June 1, 2006.
2 Registration No. 2332652, issued March 21, 2000; Section 8 and
15 affidavits accepted and acknowledged, respectively; renewed.
“Typed” drawings are now referred to as “standard character”
drawings. See Trademark Rule 2.52(a).
Ser. No. 85342789
3
Restaurants Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir.
1997).
We turn first to the du Pont factor of “the similarity
or dissimilarity and nature of the goods or services as
described in an application or registration or in
connection with which a prior mark is in use.” In re E. I.
du Pont de Nemours & Co., 177 USPQ at 567. The
registrant’s services are identified in the registration as
“legal services”; applicants’ services are identified as
“legal services, namely the practice of law by licensed
attorneys.” Obviously, registrant’s identification
encompasses the services in applicants’ identification, and
therefore the services are legally identical. Applicants
have discussed at some length what they call “the Citigroup
presumption,” referring to Citigroup Inc. v. Capital City
Bank Group, Inc., 637 F.3d 1344, 98 USPQ2d 1253 (Fed. Cir.
2011). Applicants have submitted a quote, purportedly
taken from this opinion (at 637 F.3d 1356), as to what this
presumption is: “[t]hat the registration encompasses all
services of the type described, including those in
applicant’s more specific identification, and that the
services move in all normal channels of trade.” Although
we have no quarrel with the principle set forth, we point
out that this specific language does not appear in the
Ser. No. 85342789
4
Citigroup opinion.3 In any event, applicants go on to
contend that this presumption can be rebutted by evidence
that contradicts this “presumed fact.”
Applicants are incorrect both in their supposition
that the cited presumption originated with the Citigroup
decision, and more importantly in their position that the
general presumption can be rebutted by evidence as to the
registrant’s actual use. In the 1973 case, Paula Payne
Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901,
177 USPQ 76, 77 (CCPA 1973), the predecessor to our primary
reviewing court stated that “Trademark cases involving the
issue of likelihood of confusion must be decided on the
basis of the respective descriptions of [services].” This
principle has been reiterated time and again. It is well-
established that likelihood of confusion must be determined
based on an analysis of the mark as applied to the services
recited in the applicant’s application vis-à-vis the
services recited in the cited registration, rather than
what the evidence shows the services to be. In re Dixie
Restaurants, Inc., 41 USPQ2d at 1534. This is because

3 The Citigroup opinion also cites Hewlett Packard Co. v.
Packard Press, Inc., 281 F.3d 1261, 62 USPQ2d 1001 (Fed. Cir.
2002), for the principle that “absent restrictions in the
application and registration, goods and services are presumed to
travel in the same channels of trade to the same class of
purchasers.”

Ser. No. 85342789
5
“[t]he certificate of registration is prima facie evidence
of the validity of the registration and the registrant’s
exclusive right to use the mark in connection with the
services specified.” Id. In fact, in Dixie the applicant
made an argument similar to that of applicants herein,
namely, that the registrant was not using its mark for all
of the services listed in its identification. The Court
would not entertain what was in effect a collateral attack
on the registration, stating that an ex parte proceeding is
not the proper forum for such a challenge. Id.
Accordingly, we must determine the issue of likelihood
of confusion based on the identification of services in the
cited registration and in applicants’ application. Because
the services as identified are legally identical, in that
the services identified in the registration encompass the
services identified in the application, this du Pont factor
favors a finding of likelihood of confusion.
Similarly, because the services in the cited
registration are broadly described and there are no
limitations in the identification as to the nature or type
of the legal services, or the channels of trade or classes
of purchasers, it is presumed that the scope of the
registration encompasses all services of the nature and
type described, that the identified services move in all
Ser. No. 85342789
6
channels of trade that would be normal for such services,
and that the services would be purchased by all potential
customers. See In re Elbaum, 211 USPQ 639, 640 (TTAB
1981). As a result, we must presume that applicants’ and
the registrant’s legal services travel in the same channels
of trade and are offered to the same classes of customers.
The du Pont factor of the channels of trade therefore
also favors a finding of likelihood of confusion.
Before we turn to the du Pont factor of the similarity
or dissimilarity of the marks, we will address, as
applicants have, the factors regarding the fame of the
cited mark and the number and nature of similar marks in
use on similar goods or services. Applicants are correct
that there is no evidence of fame of the cited mark.4
Applicants are incorrect, however, that as a result we
should treat this du Pont factor as weighing in applicants’
favor. Our primary reviewing court, the Federal Circuit,
has specifically stated that although the fame of a
registered mark is relevant to likelihood of confusion, “we
decline to establish the converse rule that likelihood of
confusion is precluded by a registered mark’s not being

4 We add that it would be very rare that there would be such
evidence in an ex parte case, since an examining attorney would
normally not have access to the type of evidence that is
necessary to prove fame.
Ser. No. 85342789
7
famous. In re Majestic Distilling Co., 65 USPQ2d at 1205.
We treat the factor of fame as neutral.
With regard to the number and nature of similar marks,
applicants point to three third-party registrations.
Although applicants did not properly make the registrations
of record,5 the examining attorney has addressed these
registrations, and has listed the services for two of them.
Therefore, we consider the registrations, at least insofar
as information about them has been submitted.6
However, the registrations have no probative value in
terms of the du Pont factor of the number and nature of
similar marks in use in commerce. Third-party
registrations are not evidence that the marks shown therein
are in commercial use, or that the public is familiar with
them. See In re Albert Trostel & Sons Co., 29 USPQ2d 1783,
1785-86 (TTAB 1993).7

5 We find it odd that, from the time of their response to the
first Office action, applicants have requested that the examining
attorney (and later the Board) take judicial notice of these
registrations, rather than making them of record, despite the
fact that it is a well-established principle that the Board does
not take judicial notice of registrations that reside in the
Patent and Trademark Office. See In re Duofold Inc., 184 USPQ
638 (TTAB 1974).
6 Normally, when a party requests that judicial notice be taken,
the party submits the material that it wishes to be judicially
noticed. Even with their brief, applicants have not submitted
copies of the registrations.
7 Third-party registrations may be used in the manner of
dictionary definitions, to show that a mark or a portion of a
mark has a significance in a particular industry. See Mead
Ser. No. 85342789
8
Applicants have also pointed to what they assert are
“twenty-one unregistered marks currently in use for legal
services in the United States.” Brief, p. 19. However,
applicants did not actually submit evidence of use of any
such marks. They merely listed in their various responses
a list of terms, e.g., “Virtual World Law,” “World Law
Debt,” “Common Law World Review,” along with a URL for
each. We cannot ascertain from the mere listing whether
these terms are trademarks, or if so, the goods and
services with which they are used, and we do not go outside
of the record by researching or even clicking on mere
URL’s. Applicants argue that the examining attorney
“discussed these third-party use [sic] of similar marks in
both of its [sic] Office Actions dated February 22, 2012
and November 8, 2012 without objecting to the marks being
admitted into evidence; hence the registrations and marks
should be treated as being stipulated into the record.”
Brief, p. 18. However, the examining attorney neither
discussed the listing of the names and URLs in the Office
actions, nor treated them as being of record. Further,
even if the examining attorney discussed the information,
it would not result in the contents of the websites

Johnson & Co. v. Peter Eckes, 195 USPQ 187 (TTAB 1977). We
discuss this infra.
Ser. No. 85342789
9
identified by the URLs being of record. As the Board
stated in In re Fiesta Palms, LLC, 85 USPQ2d 1360, 1366
(TTAB 2007), quoting In re Planalytics Inc., 70 USPQ2d
1453, 1457 (TTAB 2004), “A mere reference to a website does
not make the information of record. In order to review the
facts in this case, there should be evidence in the
record.” The Board further pointed out in In re
Planalytics, Inc., 70 USPQ2d at 1458, that “information on
websites is transitory and subject to change at any time at
the owner’s discretion.” Thus, the Board cannot determine
from the URLs what the various websites might have
contained at the time applicants cited them in their
February 22, 2012 and November 8, 2012 responses, or in
their brief. Applicants have simply not provided the
material from the websites on which they wish to rely, and
the Board will not and cannot take judicial notice of the
content of these websites.8
Thus, we consider only the specific information that
applicants provided, i.e., the listing of the phrases and
the respective URLs. This information has no probative
value without the websites themselves to give context to

8 Even if the website material were appropriate for judicial
notice, applicants have not provided the actual content from the
websites.

Ser. No. 85342789
10
the terms. See TBMP § 1208.03 and cases cited therein at
note 5, addressing the limited probative value of search
result summaries from a search engine when the text in the
result summary is insufficient to show the context in which
the term is used. In this case, of course, we do not even
have limited text from the websites in question.
The du Pont factor of the number and nature of similar
marks in use on similar goods or with similar services is
therefore neutral.
We now turn to the first du Pont factor, the
similarity or dissimilarity of the marks in their
entireties as to appearance, sound, connotation and
commercial impression, keeping in mind that when marks
would appear on legally identical services, as they do
here, the degree of similarity necessary to support a
conclusion of likely confusion declines. Century 21 Real
Estate Corp. v. Century Life of America, 970 F.2d 874, 23
USPQ2d 1698, 1700 (Fed. Cir. 1992). In articulating reasons
for reaching a conclusion on the issue of likelihood of
confusion, 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 a consideration of the marks in their
entireties. In re National Data Corp., 753 F.2d 1056, 224
Ser. No. 85342789
11
USPQ 749, 751 (Fed. Cir. 1985). Further, the test is not
whether the marks can be distinguished when subjected to a
side-by-side comparison, but rather whether the marks are
sufficiently similar in terms of their overall commercial
impression that confusion as to the source of the services
offered under the respective marks is likely to result.
The focus is on the recollection of the average purchaser,
who normally retains a general rather than a specific
impression of trademarks. In re Continental Graphics
Corp., 52 USPQ2d 1374, 1375 (TTAB 1999).
Applicants’ mark is WORLD’S LAW, with LAW disclaimed.
The cited mark is WORLD LAW GROUP, with LAW GROUP
disclaimed. Interestingly, applicants argue that “The Word
‘Group’ is the Dominant Feature of Both Marks,” brief, p.
21, despite the fact that GROUP does not even appear in
applicants’ mark. Applicants also contend that GROUP is
the dominant part of WORLD LAW GROUP because it “is the
word that clearly differentiates the two marks,” id., and
that the registrant is what its mark implies, i.e., a
group. We cannot view GROUP as the dominant part of
applicants’ mark, which does not even contain the word.
Further, as the examining attorney has stated, descriptive
matter, such as LAW in applicants’ mark and LAW GROUP in
the cited mark, is generally given less weight when the
Ser. No. 85342789
12
marks are compared. Cunningham v. Laser Golf Corp., 222
F.3d 943, 55 USPQ2d 1842, 1846 (Fed. Cir. 2000) (“Regarding
descriptive terms, this court has noted that the
‘descriptive component of a mark may be given little weight
in reaching a conclusion on the likelihood of confusion.’”)
(quoting In re National Data, 224 USPQ at 752); In re Dixie
Restaurants, Inc., 41 USPQ2d at 1533-34; In re Binion, 93
USPQ2d 1531, 1534 (TTAB 2009) (BINION’S, not disclaimed
word ROADHOUSE, is dominant element of BINION’S ROADHOUSE);
In re Code Consultants, Inc., 60 USPQ2d 1699, 1702 (TTAB
2001) (disclaimed matter is often “less significant in
creating the mark’s commercial impression”). Consumers are
likely to view the disclaimed word GROUP in the cited mark
in the same manner as the word “firm,” an indicator that
this is an entity or association, but will look to other
elements of the mark for their source-identifying
significance. The other elements of the cited mark, WORLD
LAW, are extremely similar to applicants’ mark, WORLD’S
LAW. Although applicants’ mark uses WORLD’S in the
possessive, it is unlikely that consumers will note or
remember this difference, which is insignificant because it
does not meaningfully alter how applicants’ mark looks and
sounds or the meaning it conveys. Further, consumers who
are familiar with the cited mark are likely to view
Ser. No. 85342789
13
applicants’ mark as a shortened form of WORLD LAW GROUP,
such that the absence of GROUP from applicants’ mark is not
sufficient to distinguish it from the cited mark. Thus,
despite the additional word GROUP in the cited mark, and
its absence in applicants’ mark, the marks are similar in
overall appearance, pronunciation, connotation and
commercial impression. Although WORLD LAW GROUP has a
suggestive connotation, the connotation is the same as that
for WORLD’S LAW. This du Pont factor also favors a finding
of likelihood of confusion.
We reach this conclusion despite applicants’ arguments
that the purchasers of applicants’ and registrant’s
services are sophisticated and careful, which arguments go
to the fourth du Pont factor (conditions under which and
buyers to whom sales are made, i.e., “impulse” vs. careful,
sophisticated purchasing). First, legal services may be
needed by the public in general, including unsophisticated
legal consumers who wish to write a will, or who suddenly
find themselves in trouble and require legal help. Such
persons are not necessarily careful or knowledgeable about
choosing legal services, and may obtain services without
investigation of the services. In such circumstances, the
small differences between applicants’ mark and the cited
mark, as discussed above, are insufficient to apprise
Ser. No. 85342789
14
consumers that these trademarks identify legal services
emanating from separate sources. Applicants further assert
that all states require a written retainer agreement; even
if applicants are correct, those entering into a retainer
or other contract for services are not likely to note that
applicants’ mark is different from the registrant’s.
Further, the consumer can be confused at the time he or she
decides to contact applicants, i.e., well before the
signing of the retainer agreement. Accordingly, although
we agree that legal services are not the subject of an
impulse purchase, even careful consumers are not likely to
recognize that applicants’ mark is different from the
registrant’s, or, if they do, they are not likely to
understand that this difference represents different
sources of the services.
Applicants argue that the seventh and eighth du Pont
factors — the nature and extent of any actual confusion,
and the length of time during and conditions under which
there has been concurrent use without evidence of actual
confusion — favor applicants’ position. Applicants base
their argument that there has been no actual confusion on
their claim that the address for registrant on its website
is in Washington, DC, and applicants maintained their main
office in Washington, DC between 2006 and 2008. As a
Ser. No. 85342789
15
preliminary matter, we note that applicants have not made
the registrant’s website of record. Further, even if we
accept applicants’ statement, concurrent use for two years
some time ago, and without any evidence of the extent of
either applicants’ or the registrant’s sales or advertising
or public recognition, is hardly persuasive that confusion
is not likely.
More importantly, the Federal Circuit has found that
an applicant’s uncorroborated statements of no known
instances of actual confusion are of little evidentiary
value:
A showing of actual confusion would of course be
highly probative, if not conclusive of a high
likelihood of confusion. The opposite is not
true, however. The lack of evidence of actual
confusion carries little weight, especially in an
ex parte context.

In re Majestic Distilling Co., 65 USPQ2d at 1205 (internal
citations omitted). We therefore treat the seventh and
eighth du Pont factors as neutral.
With respect to the twelfth du Pont factor, the extent
of potential confusion, i.e., whether de minimis or
substantial, because the consumers for legal services
Ser. No. 85342789
16
include the public at large, the extent of potential
confusion is substantial.9
Finally, applicants argue that the eleventh du Pont
factor favors their position because they “are the only
known seller of similar services (legal services, namely
the practice of law by licensed attorneys) under this mark,
or any similar mark. That being the case, Applicants have
the legal right to exclude others from using WORLD’S LAW on
competing or related goods or services.” Brief, p. 21.
This argument seems to be at odds with applicants’ claim
that there is evidence of widespread third-party use, as
well as applicants’ acceptance (in their argument regarding
the du Pont factor of the lack of actual confusion) that
the registrant has been using its mark since 1988, far
earlier than applicants’ claimed date of first use in 2006.
In any event, we are not persuaded by applicants’ argument.

9 In connection with this factor, applicants have argued that
the registrant does not actually practice law, and therefore
applicants’ and the registrant’s services would not be
encountered by consumers in situations that would create the
incorrect assumption that they originate from the same source.
We have already explained that we must determine likelihood of
confusion on the basis of the services identified in the cited
registration, and that this identification cannot be limited by
extrinsic evidence. Therefore, we give no weight to this
argument. Similarly, applicants’ argument that registrant “is
actively promoting the fact that it does not practice law,”
brief, p. 17, is not persuasive. The identification in the cited
registration is for “legal services,” and “legal services”
encompasses the practice of law.

Ser. No. 85342789
17
Applicants are the latecomers, and on this record they do
not have the right to exclude registrant from using its
mark for its identified services.
After reviewing all the evidence and arguments,
including those not specifically discussed herein,10 we find
that applicants’ mark as used in connection with their
identified services is likely to cause confusion with the
mark and the services identified in the cited registration.
Decision: The refusal of registration is affirmed.

10 To the extent that any other du Pont factors are relevant, we
treat them as neutral.