Gabriel J. Carrera

Trademark Trial and Appeal Board

Mar 28, 2019

EX (T.T.A.B. Mar. 28, 2019)

This Opinion is Not a
Precedent of the TTAB

Mailed: March 28, 2019
UNITED STATES PATENT AND TRADEMARK OFFICE
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Trademark Trial and Appeal Board
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In re Gabriel J. Carrera
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Serial No. 87133450
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Barry L. Haley of Malin Haley DiMaggio & Bowen, P.A.
for Gabriel J. Carrera

Jonathan R. Falk, Trademark Examining Attorney, Law Office 111,
Chris Doninger, Managing Attorney.
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Before Cataldo, Heasley, and Lynch,
Administrative Trademark Judges.

Opinion by Lynch, Administrative Trademark Judge:
I. Background and Evidentiary Matter
Gabriel J. Carrera (“Applicant”) seeks registration on the Principal Register of the
mark ATTORNEY THAT RIDES in standard characters for “Legal services” in
Serial No. 87133450
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International Class 45.1 The Examining Attorney refused registration under Section
2(d) of the Trademark Act, 15 U.S.C. § 1052(d), based on a likelihood of confusion
with the registered mark THE ORIGINAL ATTORNEYS WHO RIDE in standard
characters, with ORIGINAL ATTORNEYS disclaimed, for services including “Legal
services” in International Class 45.2 After the Examining Attorney made the refusal
final, Applicant appealed.
Before turning to the merits, we exclude the list of third-party registrations
Applicant offered for the first time in its Reply Brief.3 Trademark Rule 2.142(d), 37
C.F.R. § 2.142(d), provides that the record should be complete prior to the filing of an
appeal. See also In re Procter & Gamble Co., 105 USPQ2d 1119, 1120 (TTAB 2012)
(the applicant’s discussion in its brief of third-party registrations not considered
because the registrations were not properly introduced during the examination
process); TRADEMARK TRIAL AND APPEAL BOARD MANUAL OF PROCEDURE (TBMP)
§ 1203.02(e) (2018) (“Evidentiary references made in briefs but not supported by
timely submissions may not be considered.”). Regardless, a mere list of third-party
registrations, without the underlying registrations themselves, does not suffice to
make them of record. In re Broadway Chicken Inc., 38 USPQ2d 1559, 1560 n.6 (TTAB
1996) (“In order to make third-party registrations properly of record in a proceeding
such as this, applicant should submit copies of the registrations themselves, or the

1 Application Serial No. 87133450 was filed August 10, 2016 under Section 1(a) of the
Trademark Act, 15 U.S.C. § 1051(a), based on alleged use of the mark in commerce.
2 Registration No. 5113286 issued January 3, 2017.
3 9 TTABVUE 6.
Serial No. 87133450
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electronic equivalent thereof, namely, printouts from the electronic records of the
Patent and Trademark Office’s Trademark Automated Search System”).
II. Likelihood of Confusion
Our determination under Section 2(d) involves an analysis of all of the probative
evidence of record bearing on a likelihood of confusion. In re E.I. du Pont de Nemours
& Co., 476 F.2d 1357, 177 USPQ 563, 567 (CCPA 1973) (setting forth factors to be
considered, hereinafter referred to as “du Pont factors”); see also In re Majestic
Distilling Co., 315 F.3d 1311, 65 USPQ2d 1201, 1203 (Fed. Cir. 2003). Two key
considerations are the similarities between the marks and the relatedness of the
services. See In re Chatam Int’l Inc., 380 F.3d 1340, 71 USPQ2d 1944, 1945 (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 [or services] and
differences in the marks.”).
A. The Services, Trade Channels, and Classes of Consumers
The subject application and cited registration both identify “legal services.” Thus,
the services at issue are identical. We must therefore presume that the channels of
trade and potential consumers are also identical. See In re Viterra Inc., 671 F.3d 1358,
101 USPQ2d 1905, 1908 (Fed. Cir. 2012) (finding Board entitled to rely on this legal
presumption in determining likelihood of confusion); Am. Lebanese Syrian Assoc.
Charities Inc. v. Child Health Research Inst., 101 USPQ2d 1022, 1028 (TTAB 2011).
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Thus, the second and third du Pont factors weigh strongly in favor of a finding of
likely confusion.
B. Similarity of the Marks
We turn to comparing ATTORNEY THAT RIDES to THE ORIGINAL
ATTORNEYS WHO RIDE “in their entireties as to appearance, sound, connotation
and 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).
(quoting du Pont, 177 USPQ at 567). The test assesses 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 services
offered under the respective marks is likely to result. Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356, 101 USPQ2d 1713, 1721 (Fed. Cir. 2012); see also Edom
Labs. Inc. v. Lichter, 102 USPQ2d 1546, 1551 (TTAB 2012). We bear in mind that
where, as here, marks would appear on identical services, the degree of similarity
necessary to support a conclusion of likely confusion declines.” Century 21 Real Estate
v. Century Life of Am., 970 F.2d 874, 23 USPQ2d 1698, 1700 (Fed. Cir.1992); Viterra,
101 USPQ2d at 1908.
The marks are alike in their meaning and commercial impression because they
refer to a lawyer or lawyers who ride. Applicant’s specimen of use and evidence
submitted by Applicant indicate that “ride” in both cases refers lawyers who ride
motorcycles.4 As the Examining Attorney characterizes it, “[b]oth marks contain the

4 Applicant’s December 20, 2017 Response to Office Action at .pdf 6-9.
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wording ‘ATTORNEY’ or its plural followed by ‘RIDE’ with a pronoun in between.”5
While the cited mark includes the additional wording THE ORIGINAL at the
beginning, this article and adjective modify the more dominant phrase ATTORNEYS
WHO RIDE. See In re Nat’l Data Corp., 753 F.2d 1056, 224 USPQ 749, 751 (Fed. Cir.
1985) (“in articulating reasons for reaching a conclusion on the issue 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 consideration of the marks in their entireties”); see also Stone Lion Capital
Partners v. Lion Capital LLP, 746 F.3d 1317, 110 USPQ2d 1157, 1161 (Fed. Cir.
2014). In the context of this mark, the disclaimed term ORIGINAL conveys a
laudatory sense, while the term THE has no source-indicating significance. See In re
Thor Tech Inc., 90 USPQ2d 1634, 1635 (TTAB 2009) (finding WAVE and THE WAVE
“virtually identical” marks; “[t]he addition of the work ‘The’ at the beginning of the
registered mark does not have any trademark significance.”). And although
Applicant’s mark refers to ATTORNEY in the singular while the cited mark refers to
ATTORNEYS in the plural, this difference is minimal. See Swiss Grill Ltd. v. Wolf
Steel Ltd., 115 USPQ2d 2001, 2011 n.17 (TTAB 2015) (singular and plural of SWISS
GRILL deemed “virtually identical”); Weider Publ’ns, LLC v. D & D Beauty Care Co.,
109 USPQ2d 1347, 1355 (TTAB 2014) (singular and plural forms of SHAPE
considered essentially the same mark). The common elements in Applicant’s and

5 8 TTABVUE 4 (Examining Attorney’s Brief).
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Registrant’s marks are the focus of the connotations and commercial impressions,
rendering them highly similar.
As for appearance and sound, ATTORNEY THAT RIDES and THE ORIGINAL
ATTORNEYS WHO RIDE look and sound very similar because of the shared and
similar wording. As noted above, we find the differences in the marks relatively
insignificant in the overall comparison, remaining mindful that consumers may not
make side-by-side comparisons, and may have imperfect recollections of marks.
North Face Apparel Corp. v. Sanyang Industry Co., 116 USPQ2d 1217, 1228 (TTAB
2015).
Given their resemblance in sound, appearance, connotation and commercial
impression, Applicant’s and the cited marks are very similar. This factor weighs in
support of finding a likelihood of confusion.
C. Irrelevance of Alleged Geographic Scope of Actual Services
Applicant incorrectly asserts that the allegedly separate geographic markets in
which it and Registrant offer legal services should be considered in this likelihood of
confusion analysis.6 The cited registration entitles the owner to nationwide rights,
regardless of the geographic extent of actual use of the cited mark. 15 U.S.C.
§ 1057(b); Giant Food, Inc. v. Nation’s Foodservice, Inc., 710 F.2d 1565, 1568, 218
USPQ 390, 393 (Fed. Cir. 1983). “Inasmuch as applicant is seeking a geographically
unrestricted registration, the Board is constrained to evaluate similarities in terms

6 6 TTABVUE 8-9 (Applicant’s brief).
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of potentially nationwide markets….” In re Integrity Mutual Ins. Co., Inc., 216 USPQ
895, 896 (TTAB 1982) (also noting that “this is not mitigated by the fact that
insurance companies must seek special authorization to enter and provide
underwriting services under the laws of the various states”).
D. Other du Pont Factors
Applicant makes very brief, unsupported arguments about the sophistication of
customers and the alleged lack of actual confusion. No evidence was cited for either
proposition. See In re Simulations Publ’ns, Inc., 521 F.2d 797, 187 USPQ 147, 148
(CCPA 1975) (“Statements in a brief cannot take the place of evidence.”); Galen Med.
Assocs., Inc. v. United States, 369 F.3d 1324, 1339 (Fed. Cir. 2004) (“Statements of
counsel . . . are not evidence.”).
The unrestricted recitations of “legal services” would reach ordinary individuals
seeking legal counsel for matters such as wills, divorces, and small business issues.
The record indicates that Applicant and the owner of the cited registration practice
in the field of personal injury law, and Applicant practices in the additional fields of
family law and immigration law.7 These services are available to ordinary individuals
requiring legal representation. Because we must consider these “least sophisticated
potential purchasers,” there is no heightened degree of care in purchasing, and we
find this factor neutral. See Stone Lion Capital Partners, 110 USPQ2d at 1163
(“Although the services recited in the application also encompass sophisticated

7 Applicant’s December 20, 2017 Response to Office Action at .pdf 6-9.
Serial No. 87133450
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investors, Board precedent requires the decision to be based ‘on the least
sophisticated potential purchasers.’”).
As for the alleged lack of actual confusion, “uncorroborated statements of no
known instances of actual confusion are of little evidentiary value.” Majestic
Distilling, 65 USPQ2d at 1205. We also have no evidence of whether the extent and
circumstances of Applicant’s and Registrant’s use was such as to give rise to
meaningful opportunities for actual confusion to occur. In re Kangaroos U.S.A., 223
USPQ 1025, 1026‒27 (TTAB 1984). We find this factor neutral.
III. Conclusion
The overall similarity of these marks for identical services that move in the same
channels of trade to the same classes of customers renders confusion likely.
Decision: The refusal to register Applicant’s mark is affirmed.