Economic Analysis Group, Ltd.

Trademark Trial and Appeal Board

Jul 27, 1998

No. 74683774 (T.T.A.B. Jul. 27, 1998)

Paper No. 19
RFC
THIS DISPOSITION IS NOT
CITABLE AS PRECEDENT OF THE TTAB JULY 27, 98
U.S. DEPARTMENT OF COMMERCE
PATENT AND TRADEMARK OFFICE
________
Trademark Trial and Appeal Board
________
In re Economic Analysis Group, Ltd.
________
Serial No. 74/683,774
_______
Marsha Gentner of Jacobson, Price, Holman & Stern, PLLC, for
Economic Analysis Group, Ltd.
Dawnmarie Sanok, Trademark Examining Attorney, Law Office
107 (Thomas Lamone, Managing Attorney).
_______
Before Simms, Cissel and Hanak, Administrative Trademark
Judges.
Opinion by Cissel, Administrative Trademark Judge:
On June 2, 1995, applicant filed the above-referenced
application to register the mark ”CASETRACK” on the
Principal Register for goods and services which were
subsequently amended to read as follows: “software for
managing legal services,” in Class 9; and “computer
services, namely installation and maintenance of computer
software,” in Class 42. Applicant’s claim of use of the
mark since July of 1992 was the basis for the application.
This case is now before the Board on appeal from the
Ser No. 683774
2
final refusal to register based on Section 2(d) of the
Lanham Act. The Examining Attorney has held that
applicant’s mark, as used in connection with the goods and
services set forth in the application, so resembles the mark
“CASETRAC,” which is registered1 for “printed reports on the
status of litigation,” in Class 16, that confusion is
likely.
Responsive to the refusal to register, applicant made
of record copies of reports from a commercial database
concerning four third-party registrations which were
reported to have been issued to different entities for legal
publications, on one hand, and software for use in the legal
field, on the other. The two marks in the four
registrations are “LAW TALK,” and “ON POINT.” Based on the
coexistence of these registrations, applicant argued that
the products and services in the case at hand are so
different that confusion is not likely.
Along with a request for reconsideration, applicant
submitted copies of the file of the application which
matured into the cited registration.2 Applicant argued that

1 Reg. No. 1,599,589, issued on the Principal Register to
Williams & Montgomery Ltd. on June 5, 1990. Use since September
1, 1988 was claimed.
2 In addition, applicant submitted with its appeal brief a copy
of a page from the Official Gazette, May 27, 1997 edition. The
entry relates to a registration owned by another third party.
Ordinarily, because this evidence was untimely submitted under
Trademark Rule 2.142(d), it would not have been considered by the
Board. Because the Examining Attorney did not object to it, and
in fact considered it and directed argument as to its probative
Ser No. 683774
3
the specimens submitted with the application and with the
affidavit subsequently filed in connection with the
registration show that the registrant’s reports are only
provided to the registrant’s own clients, and that therefore
it is clear that the goods of the registrant are so
different from the goods and services in connection with
which applicant uses the mark that confusion is not likely.
Both applicant and the Examining Attorney filed briefs
on appeal, but applicant did not request an oral hearing
before the Board.
Based on careful consideration of the facts of record
in this application and the relevant legal principles, we
hold that the refusal to register is proper. Confusion is
likely because the goods and services set forth in the

value, however, we have considered it as if it had been properly
made of record. It does not alter our resolution of this appeal,
however. That the Patent and Trademark Office has registered the
mark “CaseTrack” for database management software related to
health-services and social-services professionals and
organizations does not establish that the mark is so weak in the
field of services related to the practice of law that confusion
is not likely in the instant case. In a similar sense,
applicant’s reference to Reg. No. 1,548,969, alleged to be
another mark which includes the term “CASE TRACKING,” does not
change the result in the instant case. Although not properly
made of record, that registration was also considered and argued
by the Examining Attorney, so we too have considered it, but all
it shows is that the disclaimed term “CASE TRACKING” has a
descriptive connotation with respect to the services set forth in
that registration. The suggestive natures of the marks in the
case before us are not in question, so applicant’s references to
these third-party registrations do not establish that the marks
at issue in this appeal are not likely to cause confusion when
they are used in connection with these goods and services.
Ser No. 683774
4
application and the cited registration are closely related,
if not overlapping, and the marks are essentially the same.
Turning first to consideration of the marks, we note
that even applicant does not seriously dispute the fact that
these two marks are very similar. The minor difference in
spelling is hardly likely to be the basis for anyone to
distinguish between the two.
Rather than arguing that differences in the marks
allow purchasers to avoid being confused, applicant argues
that the registered mark is “weak,” and is therefore
entitled to extremely narrow scope of protection, which, not
surprisingly, according to applicant, does not extend to
encompass applicant’s goods and services. Applicant argues
that its goods and services are significantly different from
the goods sold by registrant under the mark, with different
trade channels and different, sophisticated purchasers.
Further, applicant contends that there has been no actual
confusion caused by the two marks, and argues “[t]hat these
marks have peacefully existed for such an extensive period
irrefutably demonstrates that no likelihood of confusion
exists between these marks.” (April 29, 1996 response, p.3).
We disagree. For the reasons which follow, none of these
arguments persuades us that confusion is not likely.
Turning first to applicant’s “weak mark” theory, we
note that there is no support in the record for the
Ser No. 683774
5
contention that the registered mark is weak in source-
identifying significance. There can be little doubt that
anyone with an ordinary understanding of the English
language would recognize that both applicant’s and
registrant’s marks, as used in connection with the goods and
services set forth in the application and the cited
registration, are suggestive of keeping track of cases. The
third-party registrations argued by applicant do no more
than echo this fact. This suggestiveness, however, does not
create a situation in which the registered mark is not
afforded protection. Even suggestive marks, when registered
on the Principal Register, are entitled to protection
against registration of similar marks for related goods and
services.
In resolving the question of whether confusion is
likely, the Board must consider the goods and services as
they are identified in the application and the cited
registration, respectively, without any limitations or
restrictions which are not reflected therein. Toys “R” Us,
Inc. v. Lamps R Us, 219 USPQ 340 (TTAB 1983). Applicant’s
attempt to limit or restrict the registration in this ex
parte proceeding is an impermissible collateral attack on
the validity of the registration. In re Dixie Restaurants,
Inc., 105 F.3d 1405, 41 USPQ2d 1531 (Fed. Cir. 1997). We
are therefore not concerned with applicant’s allegations
Ser No. 683774
6
that the goods which registrant actually markets under the
registered mark differ from the goods as they are identified
in the registration.
The same principle applies to applicant’s contentions
that the registered mark is merely descriptive of the goods
set forth in the registration. This is also an
impermissible collateral attack on the validity of the
registration. See: In re White Swan Ltd., 8 USPQ2d 1534
(TTAB 1988); and In re Calgon Corp., 435 F.2d 596, 168 USPQ
278 (CCPA 1971).
Applicant argues that its goods and services are quite
different from the goods specified in the cited
registration, so that even if we do not find the registered
mark to be weak, confusion as to source is not likely. If
we ignore applicant’s attempt to limit its goods and
services beyond the language it used in the application,
however, and we also ignore applicant’s attempt to restrict
the goods of the registrant to what applicant contends
registrant actually markets under the registered mark, and,
instead, we compare the goods and services only as they are
identified in the application and the registration,
respectively, we find that there is a close relationship, if
not overlap, between them. Applicant has used broad
language to describe its software, and that language
encompasses software that would produce the kind of reports
Ser No. 683774
7
that are specified in the cited registration. The
application reads “software for managing legal services.”
The registration specifies “printed reports on the status of
litigation.” Applying reason and the ordinary meanings to
the words used in these statements, as we must, it is
obvious that the issuance of reports on the status of
litigation would be considered to be one facet of managing
legal services. Put differently, it would not be
unreasonable to expect that applicant’s software, which is
used for the management of legal services, would be able to
generate reports on the status of litigation.
In fact, the specimens submitted with the application
indicate as much. The advertisement states that applicant’s
software keeps track of legal matters, and provides
information about each such matter, including a listing of
legal fees accrued, a chronological record of events and
activities, critical date information, and the content,
location, and check-out history of paper files relating to
the particular legal matter. A report providing “pertinent
information about each matter,” as applicant’s specimen puts
it, would include information concerning the status of a
legal matter that is being litigated. If a law firm or a
client corporation with many legal matters pending at any
given time were to encounter reports on the status of
litigation and software capable of generating such reports
Ser No. 683774
8
both being marketed under marks as similar as “CASETRACK”
and “CASETRAC,” confusion would surely be likely to occur.
Applicant’s contention that registration is supported
by the third-party registrations to different entities for
both legal publications and software for use in the legal
field is without merit. The mere existence of such
registrations does not establish, for the purposes of the
instant appeal proceeding, that the particular goods and
services set forth in this application and the registration
which has been cited as a bar to it, both of which are
different from what is purported to be listed in the four
third-party registrations, are not related goods and
services. As discussed above, the plain meanings of the
words used in the application and registration indicate
otherwise.
We also find that confusion is likely with respect to
the services identified in the application as “computer
services, namely installation and maintenance of computer
software.” The broad wording of these services in the
application encompasses the installation and maintenance of
the software for managing legal services which applicant
markets under the same mark. For the reasons set forth
above, confusion is likely when these very similar marks are
used on both that software and the litigation status reports
specified in the cited registration. The same reasoning
Ser No. 683774
9
leads to the conclusion that confusion is also likely when
the same similar marks are used in connection with the
installation and maintenance of the software that would be
used to produce the litigation status reports and the
printed reports themselves.
That no actual confusion has come to applicant’s
attention is not determinative of the issue of whether
confusion is likely in this case. It is well settled that
in resolving an appeal of a refusal to register based on
Section 2(d) of the Trademark Act, the issue before the
Board is whether confusion is likely, not whether it has
actually occurred. Proof of actual confusion is not a
prerequisite to a finding of likelihood of confusion.
Towers v. Advent Software Inc., 17 USPQ2d 1471 (TTAB 1989).
In summary, confusion is likely because the marks at
issue here are very close to the same, and the goods
identified in the cited registration, namely printed reports
on the status of litigation, are just the type of thing one
would expect applicant’s software for managing legal
services to be able to generate. Accordingly, the refusal
Ser No. 683774
10
to register under Section 2(d) of the Lanham Act is affirmed
as to both classes of services set forth in the application,
and registration to applicant is refused.
R. L. Simms
R. F. Cissel
E. W. Hanak
Administrative Trademark Judges,
Trademark Trial & Appeal Board
Ser No. 683774
11